Appeal No. 1999-2097 Page 6
Application No. 08/621,988
that forms the crux of the invention disclosed in the reference. This, in our view, would be a
disincentive to the artisan to modify the method as proposed by the examiner. Finally, the
mere fact that both wound in place and preformed stator coils are known in the art does
not, in and of itself, suggest to one of ordinary skill in the art that it would be advantageous
to utilize preformed coils in the stator of the Japanese reference or, for that matter, that
preformed coil assemblies would be suitable for such use.
It is our conclusion that the only suggestion for combining the teachings of the
references in the manner proposed by the examiner is found in the luxury of the hindsight
afforded one who first viewed the appellants’ disclosure. This, of course, is not a proper
basis for a rejection under 35 U.S.C. § 103. In re Fritch, 972 F.2d 1260, 1264, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992). This being the case, the teachings of the applied
references fail to establish a prima facie case of obviousness with regard to the subject
matter recited in independent claim 1, and therefore the rejection of this claim will not be
sustained. It follows that we also will not sustain the rejection of claims 2-7, which depend
from claim 1.
Consideration of the teachings of Licata, which was cited against dependent claims
10-13, fails to alleviate the problems in the rejection of the independent claim which were
set out above. The rejection of claims 10-13 is not sustained.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007