Appeal No. 2004-0481
Application 09/783,260
pressure systems. We are of the opinion that the examiner overlooks the fact that there must be
some reason associated with the use of the apparatus of Flores which would have suggested to
this person to make the modification, and, we agree with appellant that there is no use disclosed
in Flores which would have led this person to do so. Indeed, the fact that the valve of Mercier
can be incorporated into the hose of the apparatus of Flores does not alone provide the basis for
combining the applied prior art. See, e.g., Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783 (“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.”).
Accordingly, on this record, the examiner has failed to point to some teaching, suggestion
or motivation in the prior art to support the combination of Mercier and Flores, and thus, in the
absence of a prima facie case of obviousness, we reverse this ground of rejection. See Lee,
supra; Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356,
51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d
1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783; ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir. 1984); In re Keller,
642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981).
A discussion of Lucore is not necessary to our decision.
The examiner’s decision is reversed.
examiner contends (id.).
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