Appeal No. 1997-1314
Application No. 08/300,684
7.)
The Examiner responds:
Fukuzawa et al was relied upon for its teaching of
using two raised ribs extending longitudinally along
two planar portions for the purpose of imparting
rigidity. In view of Fukuzawa et al’s teaching, the
combination as explained in the rejection above
would lead the ribs (i.e. when placed on applicant’s
prior art spring of Fig. 4) to extend partially into
the base portion of the spring as per claims 3 and
9. (Answer-page 7.)
We do not agree with the Examiner. The two planar
portions of Fukuzawa are the aperture and body portions, not
the base portion claimed by Appellants. APA does not teach or
suggest extending the ribs into the base portion. We see no
way to meet this claim limitation other than Appellants’ own
teaching. The Federal Circuit states that "[t]he 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), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
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