Appeal No. 2001-0079
Application No. 09/092,702
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
We consider first the Examiner’s obviousness rejection of
independent claims 8 and 20 directed to the permanent securing of
the cap, chassis, and shell components of the claimed liquid
dispensing device through the use of an adhesively applied label.
Appellants assert that the Examiner has failed to set forth a
prima facie case of obviousness since proper motivation for the
Examiner’s proposed combination of the Gross and Muscala
references has not been established. Upon careful review of the
applied prior art, we are in agreement with Appellants’ stated
position in the Briefs. 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 1260,
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