Appeal No. 1999-2425
Application 08/659,380
explained why Reinhard’s disclosure of a tool having a flat
surface and a downwardly flanged longitudinal edge for
providing these functions would have fairly suggested, to one
of ordinary skill in the art, modifying the bottom of Wentz’s
tool, which has a different purpose, i.e., pressing a carpet
edge onto hot glue seaming tape, in a manner which renders the
tool incapable of performing the function desired by Wentz,
i.e., impressing a concave set in the tape. The Gordon,
Ashbridge and Novak references were not relied upon by the
examiner for any teaching which would remedy this deficiency
in the disclosures of Wentz and Reinhard.
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
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