Appeal No. 1997-2305
Application 08/451,459
Claims 17-20
Appellant’s claim 17 requires that each of a pair of
graphite block electrodes is wedge shaped with an inclined
uppermost face, and that the electrodes have their respective
thin edges spaced apart and thereby adapted to receive a
conductive rod interposed between them. Eldridge discloses an
electrode in the form of a flat disk (page 1, lines 94-95).
The examiner argues that the shape of the electrodes is an
obvious design modification because it has been well settled
that such a modification is within the skill of the ordinary
artisan, absent a showing of unexpected results (answer, page
4). This argument is not well taken because in order for a
prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
143, 147 (CCPA 1976). The mere fact that the prior art could
be modified as proposed by the examiner is not sufficient to
establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
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