Appeal No. 97-4209
Application No. 08/532,507
[T]o modify the shape of the profile of the grinding
wheel of Miller by having various shaped profiles
such as a concave grinding surface as taught by
Quintilio would have been obvious at the time
applicant's invention was made to a person of
ordinary skill in the art in order to accommodate
and grind workpieces having a rounded shape. [Final
Rejection (Paper No. 6) at page 3].
We do not agree. In order for the examiner to set forth
a prima facie case of obviousness, she must establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art or by reasonable inferences to the
artisan contained in such teachings or suggestions. See In re
Sernaker, 702 F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983).
We find no suggestion or motivation for the combination
advanced by the examiner. Miller discloses a grinding wheel
for grinding serrated blades for use in cutter heads. The
cutter blades that are produced by the Miller method have
serrations that are perfectly true and accurate, are free from
distortion and scaling, and fit perfectly the serrations of
the body with which they interfit as is depicted in Figures 4
and 7 (column 1, lines 6-8; column 2, lines 3-8). Quintilio,
on the other hand, discloses a grinding wheel for machining
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