Appeal No. 2002-0747 Page 11
Application No. 09/006,982
important to their invention and solves problems present in the art (specification, pages
2-12). On the other hand, the examiner has not adduced any evidence in support of his
assertions that the claimed “co-location” of the air source and the delivery devices and
the use of a plurality of cassettes are “old and well known in the art,” and that
positioning the delivery devices in a plurality of cassettes is merely a duplication of
known parts for a known purpose.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
situation, we fail to perceive any teaching, suggestion or incentive which would have led
one of ordinary skill in the art to modify the Watt device in such a manner as to meet
the terms of claim 1. Watt fails to establish a prima facie case of obviousness with
regard to the subject matter recited in claim 1. This being the case, we will not sustain
the rejection of claim 1 or, it follows, of claims 2 and 8-18, which depend from claim 1.
Claims 3-7 stand rejected as being unpatentable over Watt in view of Spengler,
which was cited for its disclosure of “several representative ranges which may be used
to assist in determine [sic] proper length & diameter which encompass those set forth in
the claims” (Answer, page 10). The examiner goes on to opine that one of ordinary skill
in the art would therefore have had the “suggestion/motivation” to “optimize the [Watt]
device with these known dimensions in the art in order to produce a more efficient &
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007