Appeal No. 96-3992
Application 08/356,618
USPQ 657, 664 (Fed. Cir. 1985), cert.denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc.
v.Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.Cir. 1984). These showings
by the Examiner are an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner's obviousness rejection of independent claim 1, Appellant asserts
(Brief, page 7) a lack of support or motivation in the references for combining or modifying teachings to
establish a prima facie case of obviousness. The Examiner has sought to modify the donor brush in the
release agent management system of Fromm by relying on Kato for supplying the missing teaching of a
release agent barrier layer intermediate the sleeve and the nip forming layer. In the Examiner's view
(Answer, pages 5 and 7), the desire to strengthen the donor roll of Fromm would serve as a motivating
factor to one of ordinary skill to look to add a reinforcing barrier layer as taught by Kato.
After careful review of the Fromm and Kato references, we are in agreement with Appellant's
stated position in the Brief. The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art suggested the desirability
of the modification. In re Fritch, 972 F. 2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992). The roll separation problem sought to be overcome by Kato does not appear to exist in Fromm
since there is nothing in the disclosure of Fromm to indicate that lack of strength or durability of the
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