Appeal No. 2004-0827
Application No. 09/795,701
or suggestion for combining the references as proposed in the
rejection on appeal. The examiner has only set forth a conclusory
statement without identifying any convincing reasons or suggestions
why one of ordinary skill in this art would have added the jaw of
Redmayne to the locking assembly of Nielsen (see the Reply Brief,
page 2). See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999). “[W]hen determining the patentability of a
claimed invention which combines two known elements, ‘the question
is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the
combination.’ [Citations omitted].” In re Rouffet, 149 F.3d 1350,
1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). On the record before
us, we determine that the examiner has not identified any
convincing suggestion or reason for the desirability of adding the
jaw of Redmayne to the lock assembly of Nielsen. The examiner has
not explained why the locking assembly of Nielsen requires “proper
clamping” which would be achieved by use of the jaw taught by
Redmayne.
Additionally, as correctly argued by appellant (Brief, page
3), the “jaw” of Redmayne is mounted on a depending flange 20 of
the lid of the refuse container. The U-shaped bracket disclosed by
Redmayne is engaged with the undersurface of the lid bead 16 as
4
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