Appeal No. 95-5027
Application 08/993,198
partition. Against this backdrop, the examiner has not
provided, nor do we perceive, any teaching, suggestion, or
incentive which would have led one of ordinary skill in the
art to modify Enloe by making the partition nonresilient. The
mere fact that secondary references may establish that both
types of partitions exist in the prior art is not, in and of
itself, sufficient to provide one of ordinary skill in the art
with the necessary suggestion to combine, for the mere fact
that the prior art structure could be modified 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).
It thus is our view that the combined teachings of the
four applied references fail to establish a prima facie case
of obviousness with regard to the subject matter recited in
independent claim 1, and therefore the Section 103 rejection
of claim 1 and of claims 2-13 and 19, which depend therefrom,
cannot be sustained.
New Rejection
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