Appeal No. 2002-1569 Page 7
Application No. 09/356,431
obvious unless the prior art suggests the desirability of doing so,2 and for the reasons
set forth above in our discussion of Daniels we fail to perceive any teaching, suggestion
or incentive in either of the applied references which would have led one of ordinary
skill in the art to modify the Heidenreich wet disc vehicle brake in the manner proposed
by the examiner. In our opinion, suggestion to modify the Heidenreich system in the
manner proposed by the examiner is found only in the hindsight afforded one who first
viewed the appellant’s disclosure. This, of course, is not a proper basis for a rejection
under Section 103.3
Thus, the combined teachings of the two applied references fail to establish a
prima facie case of obviousness with regard to the subject matter recited in
independent apparatus claim 1, and the rejection of this claim cannot be sustained.
The same limitations are present in independent apparatus claim 11 and independent
method claim 19, and therefore the like rejection of these claims also is not sustained.
Nor, it follows, will we sustain the rejection of dependent claims 2-10 and 12-18.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is reversed.
2See, In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
3In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
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