Appeal No. 98-2357
Application 08/772,336
enlarge the inner diameter of the Tugwood's coil 3 relative to
the strap 1 in view of the disparate teachings of Cook.
Although the examiner's position is not a model of
clarity, it appears that the examiner may be suggesting the
mere fact that it is known in the art of telephone cords to
provide coils with varying inner diameters, as evidenced by
Cook (1 3/4 inches) and a "conventional" telephone cord (1/4
of an inch), would have provided the motivation to make the
inner diameter of the coil of Tugwood's surfboard leash 1 3/4
inches in diameter. We must point out, however, that
obviousness under § 103 is a legal conclusion based on factual
evidence (In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988)), and the mere fact that, generally speaking,
it is known in disparate arts (such as telephone cords) to
vary the inner diameter of a coil does not provide a
sufficient factual basis for establishing the obviousness of
enlarging the size of the inner diameter of the coil on
Tugwood's leash relative to the width and flexibility of the
strap. See In re GPAC Inc, 57 F.3d 1573, 1582, 35 USPQ2d
1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d 1011,
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