Appeal No. 2000-0760
Application No. 08/831,198
or motivation to modify the teachings of that reference. In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000). We do not find any such suggestion here, there
being no indication in Yanko of the desirability of saving
weight or ease of replacement; rather, the examiner's finding
of obviousness appears to be based on improper hindsight
gleaned from appellant's own disclosure.
The Larson case cited by the examiner is not persuasive.
In that case, the Court stated that "If this additional
features [sic: feature][disclosed by the reference] is not
desired, it would seem a matter of obvious choice to eliminate
it and the function it serves." 340 F.2d at 969, 144 USPQ at
350. This has been expressed by the Supreme Court as "if the
omission of an element is attended by a corresponding omission
of the function performed by that element, there is no
invention, if the elements retained perform the same function
as before." Richards v. Chase Elevator Co., 159 U.S. 477, 486
(1895). Note, however, In re Wright, 343 F.2d 761, 769-70,
145 USPQ 182, 190 (CCPA 1965) (determination of obviousness
must be based on § 103, and not upon a "mechanical rule" such
as this one). In the present case, assuming that the function
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