Appeal No. 2006-0748 Page 5
Application No. 09/740,528
the appellant that "[t]here is no suggestion of transmitted student images with respect to
either student testing in general or the Test Administrator in particular." (Appeal Br. at
9.)
"Obviousness may not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983)).
"The mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984)).
Here, we are uncertain how "the quality control means also taught by DeNicola,"
(Examiner's Answer at 8), would have suggested the desirability of modifying the
reference's on-line testing, evaluation, and reporting system by adding the ability to
observe "a student tak[ing] [an] exam." (Col. 13, l. 37.) Absent a teaching or
suggestion of transmitting a video frame of a student to a server while the student is
taking an exam, we are unpersuaded of a prima facie case of obviousness. Therefore,
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