Appeal No. 1997-4428
Application 08/259,634
Appellants argue that Kobler, therefore, does not teach a
direct contact with the underlying conductive material as
required by Appellants' claims.
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 Fritch, 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)). The Federal Circuit
reasons in Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d
1085, 1088-89, 37 USPQ2d 1237, 123940 (Fed. Cir. 1995), cert
denied, 519 U.S. 822 (1996), that for the determination of
obviousness, the court must answer whether one of ordinary
skill in the art who sets out to solve the problem and who had
before him in this workshop the prior art, would have been
reasonably expected to use the solution that is claimed by the
Appellants.
In col. 1, lines 14 through 37, Kobler teaches that it is
necessary or desirable to cover the surface of the rubber
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