Appeal No. 2001-1766
Application 08/891,884
suggested to one of ordinary skill in the art that the disk valve
50 disclosed by Nakata may be used in lieu of the heat-staked
check valve 42 in Clark. More importantly, the applied
references are silent as to the comparative costs of the two
types of check valves. It follows, therefore, that the
motivation for making the suggested modification to Clark is
based upon the examiner’s opinion. The factual question of
motivation should be resolved based on evidence of record, and
not on the subjective belief and unknown authority expressed by
the examiner. In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). Lastly, “obvious to try” is not the
proper standard for determining obviousness of the claimed
invention. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
In summary, the obviousness rejection of claims 1
through 6, 9 and 10 is reversed. The obviousness rejection of
claims 7 and 8 is reversed because the teachings of Hirosawa fail
to cure the noted shortcoming in the teachings of Clark and
Nakata.
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