Appeal No. 95-4846
Application 08/023,592
Roberts is said to have only two required components whereas the
prior art requires four components (column 3, lines 2-5).
Probst is drawn to a valve for vehicle tires having a
hardness at the inside surfaces that is higher than at the base
portion (abstract, column 1, lines 36-44). According to Probst,
this stepless transition between the softer and harder regions
provides a desired simplification in manufacture and a high level
of operational reliability (column 1, line 60-column 2, line 6,
and column 2, lines 31-34).
The examiner has failed to establish why Probst and Roberts
would have suggested to the artisan the desirability of modifying
the order to casting the polyurethane in the Hoppe process. See
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)(“The mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art
suggested the desirability of the modification [citations
omitted].”)
Appellant argues that nothing in this record suggests
combining this art (brief, page 3). “It is well established that
before a conclusion of obviousness may be made based on a
combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those
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