Ex parte MATSUI et al. - Page 13




               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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