Appeal No. 1998-1844
Application No. 08/601,726
In addition to having outer magnet 70 outside housing 12, Balter uses bevel gears
98, 32 to impart rotational motion to square shaft 40. Balter supplies linear motion to shaft
40 by means of a separate assembly comprised of drive shaft 58, attaching to holder 46
and rear end 43 of shaft 40. Balter thus discloses independent linear motion and rotary
motion, as opposed to the effectively single shaft of Westmoreland. While clearly motors
could be coaxially arranged entirely within housing 12 of the Balter device, the test for
obviousness is more restrictive than determining what could be done.
The mere fact that the prior art could be modified to result in the claimed invention
would not have made the modification obvious unless the prior art suggested the
desirability of the modification. See, e.g., In re Laskowski, 871 F.2d 115, 117, 10
USPQ2d 1397, 1398 (Fed. Cir. 1989). Prior art references in combination do not make
an invention obvious unless something in the prior art would suggest the advantage to be
derived from combining their teachings. In re Sernaker, 702 F.2d 989, 995-96, 217 USPQ
1, 6-7 (Fed. Cir. 1983). Our reviewing court requires rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art references.
See, e.g., In re Dembiczak, 175 F.3d 994, 998-99, 50 USPQ2d 1614, 1616-17 (Fed. Cir.
1999). We conclude that the objective teachings from the prior art before us are not
sufficient to establish a prima facie case for obviousness of the subject matter as a whole
of instant claim 1, and therefore cannot sustain the rejection. The rejection of dependent
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