Appeal No. 1997-0236
Application No. 08/211,829
Examiner’s proposed combination has not been established.
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 Fritch, 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 the preformed tape
insulating jackets of either Shulver or Betts to the elongate
heater structure of Smith-Johannsen. There is nothing in the
disclosure of Smith-Johannsen to indicate that moisture
penetration or lack of strength, the problems addressed by
Shulver, were ever a concern. Similarly, the desire for flame
protection, the problem addressed by Betts, is never discussed
by Smith-Johannsen. It is our opinion that the only basis for
applying the teachings of either Shulver or Betts to the
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