Appeal No. 2003-0040 8
Application No. 09/314,079
Third, the examiner has articulated no convincing reason for modifying Papp in a
way that would result in the claimed subject matter of the independent claims on
appeal. For example, in rejecting claim 1 as being unpatentable over Papp in view of
Dannhauser, the examiner determined that it would have been obvious in view of
Dannhauser to provide Papp with a plurality of fasteners “in order to secure a protective
mat [i.e., Papp’s coverplate 31] to a cover” (answer, page 5). However, Papp indicates
that bolt 33 is already quite capable of securing the coverplate 31 to the cap 27. See
column 4, lines 15-18 (“After such [tipping] adjustment has been made, then the bolt
(33) is tightened down to secure the cap (27) and cover (31) to the position shown in
FIG. 12.”). Accordingly, we find that there would be no need, and thus no motivation
except that derived from impermissible hindsight, for modifying the apparatus of Papp
in the manner proposed by the examiner. In this regard, the mere fact that a prior art
reference may be modified in the manner suggested by the examiner does not make
such a modification obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). Here, the prior art relied upon by the examiner contains no such suggestion.
For these reasons, we conclude that the teachings of Papp when combined with
Dannhauser and/or Johnson would not have suggested to one of ordinary skill in the art
providing the apparatus of Papp with a coverplate 31 having at least three
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