Appeal No. 2003-0187
Application No. 09/134,109
obvious. Moreover, and more to the point in the present appeal,
we observe that the mere fact that some prior art reference may
be modified in the manner suggested by the examiner does not make
such a modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the prior art
relied upon by the examiner contains no such suggestion.
Since we have determined that the teachings and suggestions
found in Cheng, Hanson and Gühring or Vasudeva would not have
made the subject matter as a whole of claims 39, 41, 44, 45, 47
and 48 on appeal obvious to one of ordinary skill in the art at
the time of appellants’ invention, we must refuse to sustain the
examiner’s rejection of those claims under 35 U.S.C. § 103(a).
Regarding the examiner’s rejection of dependent claim 46
under 35 U.S.C. § 103(a) based on the collective teachings of
Cheng, Hanson, Gühring or Vasudeva, Kazen and Hurson, we remain
of the view expressed above with regard to claims 39 and 45 that
there would be no need, and thus no motivation except that
derived from impermissible hindsight, for modifying the tool
retaining inserts of Cheng in the manner proposed by the
13
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007