Appeal No. 1997-3482
Application No. 08/431,779
particular claimed rib gap dimensions, i.e., prevention of
dust and debris from entering the interior of the cartridge
and harming the storage disk. We find no explicit disclosure
or any inference taken from the disclosure of Weavers that any
such problem existed in the system of Weavers. Further, the
Examiner has not provided any evidence or specific findings
that the Weavers reference as applied suggests modifying the
rib gap dimensions to obtain Appellants’ invention. The 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). Thus, the
Examiner’s 35 U.S.C. § 103 rejection of claims 6, 10, and 11
is not sustained.
In conclusion, we have not sustained the rejection of
claims 7 and 9 under 35 U.S.C. § 102(b) nor the rejection of
claims 6, 10, and 11 under 35 U.S.C. § 103, but we have
sustained the rejection of claims 1-5 and 8 under 35 U.S.C. §
102(b). Accordingly, the decision of the Examiner rejecting
claims 1-11 is affirmed-in-part.
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