Appeal No. 2002-1860
Application No. 09/204,275
hole 5. According to the Examiner (id.), the skilled artisan would
have been motivated and found it obvious to add a repeat open and
close feature to the device of Fujiura “. . . to avoid disc
contamination, as suggested by Akiyama, column 4, line 6.”
Appellants’ arguments (Brief, pages 24 and 25; Reply Brief,
page 12) in response to the obviousness rejection assert that a
prima facie case of obviousness has not been established since
there is no suggestion or motivation in the disclosures of the
Fujiura and Akiyama references for the Examiner’s proposed
combination. Upon careful review of the applied prior art in light
of the arguments of record, we are in general agreement with
Appellants’ stated position in the Briefs. The mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
While the Examiner asserts a problem with disc contamination
through an open sensor hole as the motivation for the proposed
combination of Fujiura and Akiyama, there is no indication in
Fujiura of any problem with disc contamination through the sensor
hole. To the contrary, as pointed out by Appellants, the sensor
hole 23 in Fujiura extends through the upper and lower cases to
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