Appeal No. 1997-0123
Application 08/368,926
failed to set forth a prima facie case of obviousness since
proper motivation for one of ordinary skill to make the
Examiner’s proposed combination has not been established. In
Appellants’ view (Brief, page 5), the skilled artisan would
not be motivated to employ the teachings of Suetake with
Nakamura and the admitted prior art since Suetake’s slot
configuration is directed to a totally different problem,
i.e., tape scrap minimization rather than strain relief.
Upon careful review of the applied prior art, we are in
agreement with Appellants’ 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 Flitch, 972 F. 2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). It is our view that, while a
showing of proper motivation does not require that a
combination of prior art teachings be made for the same reason
as Appellants to achieve the claimed invention, we can find no
motivation for the skilled artisan to apply Suetake’s cross
slot tape configuration to the combined film carrier of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007