Appeal No. 1999-2003
Application No. 08/751,545
the claims grouped therewith. Therefore, we will sustain the
rejection of claims 1 through 3, 5, 6, 8, 9, 21, 25, and 26.
Regarding claim 24, we agree with appellants that the
rejection fails. The examiner's assertion (Final Rejection, page
3) that it would have been obvious to use a gel-like supporting
member for Koyanagi's members because such were notoriously well-
known is insufficient. A factual inquiry whether to modify a
reference must be based on objective evidence of record, not
merely conclusionary statements of the examiner. See In re Lee,
277 F.2d 1338, 1342-43, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
Furthermore, conventionality does not suffice as a motivation to
use the material. Consequently, we cannot sustain the
obviousness rejection of claim 24.
As to the rejection of claim 4 adding Brissier to the
combination of references discussed above, we again agree with
appellants. In particular, appellants argue (Brief, page 10, and
Reply Brief, page 4) that Brissier teaches avoiding breakage of
the container, whereas the claim recites using a material for the
container that breaks before the disk drive inside is damaged.
Brissier states (column 2, lines 40-44) that "the caps make it
possible to maintain the integrity of the external enclosure, in
such a way that it has an adequate strength to protect the
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