Appeal No. 2001-1453 Page 8
Application No. 08/990,945
incentive, or suggestion in either of these references that would have led one of ordinary
skill in the art to combine them in the manner proposed by the examiner. The examiner’s
argument that the use of open-cell foam would make the Robb clip “light weight” is not
persuasive because there is no reason to believe this would, even if true, improve or be
advantageous to the Robb device; the examiner’s opinion that such would cause the clip to
“adequately engage” the object, which we shall assume is meant to suggest that the
engagement of the clip with the object being held is improved, is not based upon any
evidence, and therefore also is not persuasive. It appears to us that the only suggestion for
modifying the Robb clip by replacing the disclosed frictional material with open-cell foam is
found in the hindsight afforded one who first viewed the appellant’s disclosure. This, of
course, is not a proper basis for a rejection under Section 103. In re Fritch, 972 F.2d
1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that the combined teachings of Robb and Frantz fail to
establish a prima facie case of obviousness with regard to the subject matter recited in
independent claim 1. This being the case, we will not sustain the rejection of claims 1, 6
and 9.
The defects noted above with regard to the basic combination of Robb and Frantz
are not cured by further consideration of Brown (added with regard to claim 2 for its
teaching regarding the thickness of the foam material), of Bright (added with regard to
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