Appeal No. 1997-4002
Application 08/459,880
Concerning Schirmer, the examiner does not contend, and it is
not apparent to us, that this reference makes up for the above
noted deficiency in Ferguson. Thus, we conclude that the
examiner has failed to advance any factual basis to support
his conclusion that it would have been obvious to one of
ordinary skill in the art to modify Ferguson in the manner
proposed. The mere fact that Ferguson’s patch could be
extended up to or past the bottomline of the bag does not
suffice. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984) (the circumstance that the prior art
could be modified to meet a claim would not have made the
modification obvious unless the prior art suggested the
desirability of the modification). Here, neither Ferguson nor
Schirmer contains a suggestion for the modification proposed
by the examiner.6
6In this regard, the examiner’s reliance on case law such
as In re Shepard, 319 F.2d 194, 138 USPQ 148 (CCPA 1963); In
re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962); and In re
Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA 1969) to fill this
gap in the evidentiary basis for the rejection is not
7
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