Appeal No. 2001-1453 Page 7
Application No. 08/990,945
desired cushioning effect, but does not function in such a manner as to frictionally engage
an element inserted between layers thereof.
We do not agree with the examiner’s conclusion that the teachings of these two
references render claim 1 obvious, for two reasons. First, it is our view that Frantz is not
analogous art, and thus is not properly combinable with Robb. The test for analogous art is
first whether the art is within the field of the inventor's endeavor and, if not, whether it is
reasonably pertinent to the problem with which the inventor was involved (In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979)), and a reference is reasonably
pertinent if, even though it may be in a different field of endeavor, it logically would have
commended itself to an inventor's attention in considering his problem because of the
matter with which it deals (In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed.
Cir. 1992)). Clearly, Frantz is not within the field of the appellant’s endeavor, and we see
no reason why this patent to seat cushions would logically have commended itself to the
attention of an inventor who was attempting to solve the problem of frictionally holding a
collapsible toothpaste tube in a spring clip.
Second, even assuming, arguendo, that Frantz can be considered to be analogous
art, the mere fact that structure could be modified does not make such modifications
obvious unless the prior art suggests the desirability thereof (In re Gordon 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)), and we fail to perceive any teaching,
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