Appeal No. 2000-1435 5
Application No. 08/601,785
parallel to opposed surfaces greater than a dimension in a
direction parallel to the thickness dimension. The examiner
simply concludes that such a feature would be well within the
skill of the routineer.
Moreover, the teachings or suggestions, as well as the
expectation of success, must come from the prior art, not
applicants’ disclosure. See In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991). The mere fact that the prior
art could be modified would not have made the modification
obvious unless the prior art suggested the desirability of the
modification. In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d
1397, 1398 (Fed. Cir. 1989)(quoting In re Gordon, 733 F.2d 900,
902, 221 USPQ2d 1125, 1127 (Fed. Cir. 1984). Here, the
examiner’s rejection does not explain how the prior art suggests
the desirability of the modification.
In view of the above, we therefore reverse the rejection.
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