Appeal No. 2004-0616
Application 09/692,982
is wavy in form, said transition is from a
generally oval shape to a wavy shape, since
applicant has not disclosed that the shape or
form of the transition solves any stated
problem in a new or unexpected way or is for
any particular purpose which is unobvious to
one of ordinary skill and it appears that the
claimed feature does not distinguish the
invention over similar features in the prior
art, since the shape or form of Ripka will
perform the invention as claimed by the
applicant (answer, pages 5-6),
we find no basis whatsoever in Ripka or otherwise for such
wholesale speculation and conjecture on the examiner’s part.
When an obviousness rejection is based on a single prior art
reference, there must be a showing of a suggestion or motivation
to modify the teachings of that reference to arrive at the
claimed subject matter. See In re Kotzab, 217 F.3d 1365, 1370,
55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). There is no such
showing in the rejection presently before us on appeal.
Moreover, the examiner is clearly in error with regard to the
assertions that appellants have not disclosed that the specified
length of the transition region solves any stated problem or is
for any particular purpose. Appellants’ specification at pages 8
through 10 and Figure 8 of the application clearly highlight
both the problem solved and the particular purpose served by a
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