Appeal No. 2002-0947 Page 4
Application No. 09/518,835
stripping sections of the first and second elongated members are “of different
dimensions for stripping the insulation layer of different sizes of electrical wires.” While
an improvement of Yang’s invention is the provision of lobe members 39 for
cooperatively preventing movement of the first and second elongated members away
from each other when the first and second elongated members are operated such that
the wire stripping members cooperatively strip an insulation layer of an electrical wire,
Yang provides no teaching or suggestion to alter the relative sizes of the openings
formed between the teeth of the stripping sections from that known in the prior art, that
is, recesses of different dimensions for stripping the insulation layer of different sizes of
electrical wires.
While the examiner may be correct that the holes in Yang’s wire stripping section
“could be of equal size” (final rejection, page 3), this is insufficient to establish that it
would have been obvious to so modify Yang’s wire-stripping section. The mere fact
that the prior art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification. See In re Mills, 916
F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
The examiner’s position that the provision of equally-sized stripping cutters would
have been obvious to one of ordinary skill in the art at the time of the invention, “since it
is within the general skill of a worker in the art to duplicate the essential working parts of
a device on the basis of its suitability for the user’s preference as a matter of design
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