Appeal No. 1999-0365
Application 08/601,724
claimed second axis. Nevertheless, the examiner asserts that
such an arrangement would have been obvious to the artisan
[answer, pages 3-4]. With respect to independent claim 72,
the examiner asserts that it would have been obvious to the
artisan to modify the tester of Weeder so that it could test
transmissions having longitudinally mounted transaxles as
recited in claim 72 [id., page 5].
With respect to independent claim 1, appellant argues
that the examiner has provided no legitimate reason or
motivation for the artisan to modify the device of Weeder.
Appellant argues that since Weeder did not intend to test
longitudinally mounted transaxle transmissions, there would be
no reason to provide a pivoting headstock plate as claimed
[brief, pages 6-8].
We agree with the position argued by appellant. The
examiner’s proposed modification of Weeder is based on pure
speculation and does not come from the teachings of the
reference. The mere fact that the prior art may be modified
in the manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
7
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