Appeal No. 98-1261
Application 08/435,869
would have found it obvious to modify French ‘008 by forming the contact element into a plurality of
spaced, parallel members, suggestion being found in the explicit improvement in electrical contact and
the reduction in wear that are the advantages of the Mabuchi invention. We therefore are of the opinion
that the combined teachings of French
‘008, Mabuchi and French ‘421 establish a prima facie case of obviousness with regard to the subject
matter of claim 17, and we will sustain the rejection of claim 17 and of claims 18 and 24-27.
The rejection of claims 19, 20, 21 and 23 as being unpatentable over French ‘008, Mabuchi
and French ’312 is sustained on the basis of the same rationale as was set forth above with regard to
the other combination of references.
We have carefully considered all of the arguments advanced by the appellants with regard to
the Section 103 rejections. However, they have not persuaded us that the examiner’s rejections should
not stand. Some of the arguments presented by the appellants, such as those directed to space
sensitivity, fail from the outset because they are predicated upon limitations that are not present in the
claims. See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982). Our position with
regard to the arguments challenging the existence of suggestion to combine the references should be
apparent from the foregoing explanations of our findings and conclusions.
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