Appeal No. 2004-0241 Page 8
Application No. 09/773,366
been applied. In any event, even if one were to accept, arguendo, the examiner’s
conclusion that Cucchi teaches slowing the feed mechanism during stock feeding, we
fail to perceive any teaching, suggestion or incentive which would have led one of
ordinary skill in the art to modify the Zugel system by adding such a brake if for no other
reason than it would cause Zugel to be unable to accomplish the stated objective of not
slowing the speed of the feeder mechanism until the beginning of the machining step,
and this would operate as a disincentive for one of ordinary skill in the art to make such
a modification. In this regard, the mere fact that the prior art structure could be modified
does not make such a modification obvious unless the prior art suggests the desirability
of doing so. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
It therefore is our conclusion that the combined teachings of Zugel and Cucchi
fail to establish a prima facie case of obviousness with regard to the subject matter
recited in independent claim 1 and, it follows, of dependent claims 2 and 3. As a
consequence, this rejection of claims 1-3 cannot be sustained.
Claims 4-14, all of which are dependent from claim 1, stand rejected as being
unpatentable over Zugel in view of Cucchi and Manning ‘031, the latter being added for
its teaching of using stock stopping devices. Be that as it may, Manning ‘031 fails to
overcome the deficiency discussed above in the combination of Zugel and Cucchi
against parent claim 1, and we therefore will not sustain this rejection.
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