No. 1998-0549 Page 5
Application No. 08/661,711
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 case, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the art to modify the Dickson
arrangement by welding the edges of the gaskets to the locating member. The
examiner’s reasoning in this regard is “since this [welding] is an extremely well known
way to fasten metal parts” (Answer, page 4). However, in view of the fact that Dickson
sees no need to attach the locating member to the gaskets in any manner, and in the
absence of any evidence indicating that an advantage would be gained by doing so, we
are not persuaded that one of ordinary skill in the art would have been motivated to
perform the examiner’s proposed modification.
Further consideration of Matsushita, which was applied for teaching making the
gasket out of stainless steel, does not alter the foregoing conclusion.
It therefore is our position that the combined teachings of Dickson, the Japanese
reference, and Matsushita fail to establish a prima facie case of obviousness with
regard to the subject matter recited in claim 1, and we will not sustain the rejection.
Claims 2 and 10, which depend from claim 1, stand rejected on the basis of the
references applied against claim 1, taken further in view of Yoshino. However, it is our
view that Yoshino fails to overcome the deficiency in the rejection of claim 1 which we
pointed out above, and therefore we also will not sustain this rejection.
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