Appeal No. 1997-0424
Application 07/985,253
protect the substrate against chipping and corrosion, a common
problem with the paint on the automobiles and electrical
appliances with which Masubuchi is concerned, the Examiner is
off the mark in deducing that Masubuchi solves the problem
Appellants are dealing with, which is to protect the delivery
member against abrasion. We find nothing in Masubuchi, and
neither does the Examiner, which discusses abrasion and/or
friction between contacting surfaces.
Therefore, we agree with Appellants that there is no
motivation to combine the teachings of Masubuchi with
Takahashi [brief, pages 8 to 17 and reply brief, pages 1 to
3]. The Federal Circuit states that “[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 Fitch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 773 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ 2d at 1239 (Fed.
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