Appeal No. 2002-0558 Page 10
Application No. 09/289,076
F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986) (citing W.L. Gore & Assocs. v.
Garlock, 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983)).
Here, Meyer purposefully uses a "non-ferrous toroidal coil assembly 34," col. 6,
ll. 9-10 (emphasis added), for a stated purpose. Namely, "[t]he non-ferrous nature of
the coil assembly 34 results in a low inductance coupling back into the series capacitive
circuit of the insulation 20 and, therefore, does not alter the magnitude of the charging
current 32 being measured." Id. at ll. 13-17. The examiner's proposal to substitute a
ferromagnetic coil for the reference's non-ferrous coil, "would require . . . a change in
the basic principles under which," In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352
(CCPA 1959), Meyer "was designed to operate." Id., 123 USPQ at 352. "Such a
material and radical modification of the prior art would be contrary to the teachings of
the primary reference patent . . . and could be made only with the assistance of [the]
appellant's disclosure." In re Irmscher, 262 F.2d 85, ?, 120 USPQ 196, 198 (CCPA
1958).
Because the examiner's proposal to substitute a ferromagnetic coil for Meyer's
non-ferrous coil would have required a change in the basic principle under which the
reference was designed to operate, we are not persuaded that an artisan would have
been motivated to combine the references in the proposed manner despite any desire
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