Appeal No. 1997-2426
Application 08/087,849
Therefore, we fail to find any suggested desirability of modifying Nakano with Heilmann,
Dowdle, and Nelson to obtain the leaf spring member as recited in the Appellants’ claims 38 through
41, 44 through 47 and 50.
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 Fitch, 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). Upon our review of Nakano, Heilmann and Dowdle
references, we fail to find that the prior art would have suggested the modification proposed by the
Examiner.
In regard to the rejection of claims 42, 43, 48 and 49 as being unpatentable under 35
U.S.C. § 103 over Nakano in view of Heilmann and Dowdle and further in view of Boyajian, Hill,
and Miwa, we fail to find that Boyajian, Hill and Miwa provide the missing teaching or suggestion to
modify the Nakano biasing members 6 and 7 with a leaf spring.
Since there is no evidence in the record that the prior art would have suggested the
desirability of such a modification, we will not sustain the Examiner’s obviousness rejection of claims
42, 43, 48 and 49.
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