Appeal No. 1999-0112 Page 9
Application No. 08/693,614
And Staehle's film does not use the holes at all for mounting,
rather it is positioned within the shallow seat of central
opening (18). Even if one used Staehle's film in Roehrl's
mount, as suggested by the examiner, they would insert the
film with the enclosed holes in registry with the projections
(17) as suggested by Roehrl. In order that the Staehle's film
cooperate with Roehrl's mount as recited in the appellant's
claims 5 and 9 it would have to be cut to the right length so
that there are holes with open ends which just fit against
Roehrl's projections (17) when the film is extended and we
find nothing in either prior art reference which would have
suggested cutting Staehle's film to this length. Therefore,
it is our view that the examiner has failed to provide an
adequate explanation of what there is in the applied
references that would have been suggestive of their
combination.2 Therefore, we do not see in either Roehrl or
Staehle any basis for their combination in the manner
2 The mere fact that the references can be combined or modified does not
(continued...)
(2 continued...)
render the resultant combination obvious unless the prior art also suggests
the desirability of the combination. See In re Mills, 916 F.2d 680, 682, 16
USPQ2d 1430, 1432 (Fed. Cir. 1990).
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