Appeal No. 1999-2062 Page 9
Application No. 08/928,311
against the prior art." In re Wilson, 424 F.2d 1382, 165 USPQ
494, 496 (CCPA 1970). 2
In applying the statutory test of obviousness to the art
of record (i.e., Hunt), we conclude that the appellants
process invention as claimed is not prima facie obvious in
view of the applied prior art. Although the prior art
reference to Hunt does suggest a method of manufacturing a
grinding roll including a plurality of rib members, Hunt does
not specifically teach or suggest that the rib members be
spaced as set forth in claim 13 or have decreasing height as
set forth in claim 26. The mere fact that Hunt's grinding
roll is "similar" to the grinding roll manufactured by the
claimed method does not establish that Hunt's grinding roll
would be modified such that it would have either (1) the rib
member spacing as recited in claim 13 or (2) the decreasing
height of the rib members as recited in claim 2, unless the
prior art suggested the desirability of such a modification.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
2See also Manual of Patent Examining Procedure (MPEP)
§ 2143.03.
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