Appeal No. 2004-0579 Page 6
Application No. 09/647,126
the friction ring 80 of Baumgartner on an unthreaded portion of the adjusting spindle 70
in the face of the specific teaching of Baumgartner to have the friction ring act on the
threaded portion of the spindle. While the interference fit of the friction ring with the
spindle 70 described by Baumgartner might be sufficient to provide the necessary
torque even when acting on an unthreaded portion of the spindle, the applied prior art
provides no incentive or motivation for such a modification. The mere fact that the prior
art could be so modified would not have made the modification obvious unless the prior
art suggested the desirability of the modification. See In re Mills, 916 F.2d 680, 682, 16
USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
Inasmuch as the examiner’s rejection of claims 19 and 26 as being unpatentable
over Baumgartner in view of Angerfors rests in part on the examiner’s determination
that the above-mentioned modification of Baumgartner would have been obvious in
view of the teachings of Angerfors, we cannot sustain the rejection. It follows that we
also cannot sustain the like rejection of claims 20-25 and 27-33 depending from claims
19 and 26.
REMAND TO THE EXAMINER
Pursuant to our authority under 37 CFR § 1.196(a), we remand this application to
the examiner to consider the following.
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