Appeal No. 97-4161
Application 08/397,408
over Bauernfeind ‘728 in view of any one of six secondary
references. Even considering that each of these references
teaches embossing a material with a plurality of “pin-like”
displacements, the mere fact that the prior art structure
could be modified in the manner proposed by the examiner does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we
fail to perceive any teaching, suggestion or incentive which
would have led one of ordinary skill in the art to modify
Bauernfeind ‘728 by replacing the “dot” displacements with a
continuous pattern of “pin-like” displacements, for to do so
would cause the two webs to be bonded together in a manner
which nullifies the inventive concept (see column 4, line 49
et seq.). This, in our view, would have acted as a
disincentive to the artisan to combine the references in the
manner set forth by the examiner, and thus the required prima
facie case of obviousness is not established. We, therefore,
will not sustain this rejection.
The third rejection of the two independent claims is that
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