Appeal No. 1997-3784
Application 08/495,297
effectively discharge debris from the abrading operation”
(main answer, page 11).
Obviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention
absent some
teaching or suggestion supporting the combination; the mere
fact that prior art may be modified in the manner suggested by
an examiner would not have made the modification obvious
unless the
prior art suggests the desirability of the modification. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). As indicated above, the abrasive pads/discs
respectively disclosed by Wiand ‘795 and Maran embody
substantial differences in structure and method of
manufacture. In short, there is nothing in the collective
teachings of these references which would have suggested the
highly selective combination of features proposed by the
examiner. The explanation advanced by the examiner in support
of the combination, i.e., to provide the Wiand pad with
scavenging channels as taught by Maran, highlights the
impermissible hindsight impetus for the combination. To begin
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007