Appeal No. 1997-2076
Application No. 08/175,718
have found it obvious to include a transformer in Strohbeck to
provide higher vibrational speed as taught by Spitler.
In response, Appellant asserts that the Examiner has
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.
Upon careful review of the applied prior art, 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). We can find no motivation for
the skilled artisan to combine the transformer teachings of
Spitler with the vibrator structure of Strohbeck. There is
nothing in the disclosure of Strohbeck to indicate that a lack
of operating speed, the problem addressed by the transformer
of Spitler, was ever a concern. It is our opinion that the
only basis for applying the teachings of Spitler to the
vibrator structure of Strohbeck comes from an improper attempt
to reconstruct Appellant’s invention in hindsight.
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