Appeal No. 1998-0158 Page 8
Application No. 08/427,587
invention. The “Difference section” to which he refers is
part of the appellants’ Information Disclosure Statement.
(Paper No. 3.) Although the section mentions bending a head
plate, it explains that the head plate is bent by the
appellants’ invention. (Id.) The examiner’s reliance on the2
appellants’ explanation of their invention is impermissible.
For the foregoing reasons, we are not persuaded that the
prior art as a whole would have suggested the desirability,
and thus the obviousness, of combining Yohda and Nanba. The
examiner has impermissibly relied on the appellants’ teachings
or suggestions; he has not established a prima facie case of
obviousness. Therefore, we reverse the rejection under 35
U.S.C. § 103 over Yohda in view of Nanba. We next address
obviousness of the claims over Yohda in view of Takeshita.
Obviousness over Yohda in view of Takeshita
The appellants argue, “one of skill in the art would take
no suggestion from JP 189463, because the problems being
2The section merely indicates that Nanba’s invention
bends “a metallic plate.” (Id.)
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