Appeal No. 2005-1224
Application No. 10/087,897
when viewing the page of the schematic upside down
[sentence bridging pages 5 and 6 of Answer].
We appreciate the effort made by the examiner in determining
what would have been obvious to one of ordinary skill in the art.
However, the flaw in the examiner's reasoning is that it sets
forth what one of ordinary skill in the art could have done to
arrive at the claimed invention, rather than what would have been
suggested by the applied prior art. It is well settled that the
mere fact that the prior art could be modified would not have
made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present case,
we concur with appellants that the requisite teachings of the
prior art to support a rejection under § 103 are lacking.
The additional disclosures of Larson and Murakami, cited by
the examiner for various other claimed features, do not remedy
the deficiencies of the combined teachings of Simhaee and Skalsky
discussed above.
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