Appeal No. 97-4420
Application No. 07/995,747
Appellants argue that it would not have been obvious to
combine Nobuhiro and McShane because Nobuhiro is a non-power
device whereas McShane is a power device. Appeal Brief at 6-
9. To support that argument, appellants present an expert
affidavit from Richard A. Blanchard.
The examiner responds by saying that the claims are not
limited to power devices. The examiner does not mention the
expert affidavit.
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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992).
We agree with appellants. The affidavit supports the
argument that power devices (McShane) and non-power devices
(Nobuhiro and Hayakama) present different concerns to the
skilled artisan and therefore would not have suggested the
examiner’s proposed combination. Affidavit at 3-4. For
example, we are left with no discernible motivation for
applying McShane’s roughened undercut to Nobuhiro’s device.
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