Appeal No. 2002-1127
Application No. 09/042,897
cutting blade. First, the motivation alluded to by the examiner in rejecting the claims (i.e., that
providing the cutters of D’Angelo or Helprin in Miyake would facilitate the cutting of the web
material in Miyake) is presumably already provided by Miyake’s rotary cutter. Second, in contrast
to the examiner, we do not view Miyake’s general statement at column 10, lines 3-6, that other
known cutting tools may be utilized in the practice of Miyake’s method as an invitation to substitute
virtually any prior art cutter in place of Miyake’s rotary cutter blade. The prior art must suggest the
desirability of the substitution in order to establish the obviousness of the proposed 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 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.”). In our view, the only suggestion for modifying Miyake’s
method in the manner proposed by the examiner to meet claim requirement that the blades are
fixedly positioned on the holder stems from impermissible hindsight knowledge derived from the
appellants’ own disclosure. Third, the examiner’s assertion that Miyake provides motivation to
combine “by the fact that it would not be necessary to provide a separate motor to rotate a circular
cutter if the circular cutter is replaced by the fixed blades” (answer, page 7) is not well taken
because the alleged advantage is not taught by Miyake or either of the other applied prior art
references. In fact, Miyake’s teaching of one and two motor alternatives (column 4, lines 35-45)
suggests that Miyake is unconcerned as to whether one or two motors are utilized. For these
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