Appeal No. 96-3031
Application 08/098,062
have been obvious because the proposed modification of the Nance
insert would “likely be at the expense of reduced wear life”
(main brief, page 5) and thus runs counter to Nance’s repeatedly
stated objective of increasing wear resistance.
The discussion in the last paragraph on page 7 of the
appellants’ specification lends support to the assertion that the
proposed modification of the Nance insert would be at the expense
of reduced wear life. Nonetheless, both Nance (see column 2,
lines 49 through 52) and the appellants’ admission establish that
increased penetration rate also is a desired characteristic of
mine roof cutting inserts. Indeed, the combined teachings of
Nance and the admitted prior art demonstrate that the artisan
would have readily appreciated the proposed modification of the
Nance cutting insert as involving a relatively simple and
straightforward tradeoff of one known advantageous property
(increased wear life) for another (increased penetration rate).
In this light, the differences between the subject matter recited
in representative claim 1 and the prior art are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art.
Accordingly, we shall sustain the standing 35 U.S.C. § 103
rejection of claim 1 and of claims 2, 6 through 9, 13 and 14
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