Appeal No. 1997-1162
Application 08/200,455
ordinary skill in the art would have known to make separate
pieces as a unitary element. However, there is no express
teaching to form a sleeve with ball-running grooves and the
rotor as a unitary structure. "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), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The teachings of Voll
and Fruge would have suggested only that a cartridge assembly
be mounted in the sleeves of the primary references.
Therefore, we conclude that the Examiner has failed to
establish a prima facie case of obviousness with respect to
independent claims 11 and 19. Dependent claims 12-18 fall
with claim 11. The rejections of claims 11-19 are reversed.
Although we have reversed the rejection of all claims, we
have some comments on Appellant's other arguments regarding
the dependent claims.
Appellant argues (e.g. Br18) that the Examiner failed to
identify any teaching of positioning of the magnets and yokes,
- 14 -
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007