Appeal No. 2000-1269
Application 08/756,349
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 has provided no evidence that one of
ordinary skill in the art, given only the applied prior art,
would have reached an appropriate balance between production
cost and catalyst support body strength by making all of the
smooth layers one thickness and all of the corrugated layers a
smaller thickness rather than doing what Maus discloses, i.e.,
reinforcing just some of the smooth layers and making all of
the other layers, both smooth and corrugated, the same
thickness, thereby minimizing the production cost of all of
the other layers while providing the required catalyst support
body strength. The record indicates that the motivation for
modifying Maus as proposed by the examiner comes from the
appellant’s disclosure of his invention rather than coming
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