Appeal No. 1997-3962
Application 08/500,741
The fact that a rearrangement of parts of a prior art
device may result in a device that operates in the same manner
is not, by itself, evidence of obviousness. The examiner must
still demonstrate why the artisan would have been motivated to
modify the prior art. Here, the examiner’s reasons are based
on pure speculation such as an increase in manufacturing
yield. There is absolutely no evidence on this record to
support such assertions by the examiner. Since the
evidentiary record before us does not support the examiner’s
conclusion of obviousness, we do not sustain the examiner’s
rejection of claims 6-9 under 35 U.S.C. § 103.
Since the combination of Valstyn and Fukazawa would
not have suggested the obviousness of the claimed invention,
we need not dwell on the merits of appellants’ argument that
the device of Fukazawa is inoperable. We simply note for the
record that a patent is presumed to be valid, and the burden
of proving that a patent is inoperable, and therefore invalid,
is an extremely heavy one. Arguments of appellants’
representative and the opinion of Dr. Yuan that the Fukazawa
device does not effectively operate would not have been
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