Appeal No. 1999-2102 Page 6
Application No. 08/715,990
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present case,
we fail to perceive any teaching, suggestion or incentive in either reference which would
have led one of ordinary skill in the art to outfit the Wheeler toilet paper dispenser with a
tongue for engaging the separation lines between the individual sheets to enable the
sheets to be separated for, from our perspective, the record is devoid of evidence
establishing reason for doing so. In this regard, the examiner’s statement that this was
“well known” because of the showing of Richardson (Answer, page 3) is not persuasive
because Richardson is not dispensing toilet paper, which is easily torn, but bags made of
plastic, a material that commonly is considered much more difficult to tear. The examiner’s
later comment that the modification is justified because “tearing initiators” such as teeth
are present on toilet paper dispensers in the PTO’s Crystal Plaza buildings (Answer, page
5) not only is merely opinion, but by its very name (“tearing initiator”) would appear not to
operate on perforations between sheets, but would itself be the means by which the sheets
are caused to be separated.
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