Appeal No. 2001-0339 Page 5
Application No. 09/250,583
towels as safety surfaces in Pugh’s description of the prior art that the examiner bases the
conclusion that it would have been obvious to substitute a towel for the rubber mat
disclosed by Boschelli.
What we find to be lacking in the examiner’s rejection, however, is a reason for one of
ordinary skill in the art to substitute the textile material for the rubber mat. In this regard, we
first note that the examiner has not directed us to an explicit teaching of the advantage of
using a textile material over other materials, such as rubber, nor has an inherent advantage
been set forth. In addition, eliminating the rubber mat with its apertures and its upstanding
studs or nipples in favor of a towel would substantially alter the structure of the Boschelli
mat, and would appear to eliminate the feature of providing a massaging or rubbing
surface and render ineffective or at least less satisfactory the anti-slip properties, which
also rely upon the studs or nipples (page 1, lines 95-101). This, from our perspective,
would have operated as a disincentive to one of ordinary skill in the art to make the
proposed modification. Moreover, Pugh teaches away from the proposed modification by
suggesting that the towel is unsuitable for use as a safety mat in a bathtub.
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In the present case, we fail to
perceive any teaching, suggestion or incentive in either reference which would have led
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007