Appeal No. 2004-1376
Application No. 09/859,984
The presence of the counter weights in the suggested one piece crankshaft assembly
of Karl would prevent the use of a one piece bearing support that could be slid into
place. Moreover, the Examiner has not addressed the means for securing additional
counterweights to the assembly. The mere fact that the prior art could be modified
as proposed by the Examiner is not sufficient to establish a prima facie case of
obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). The Examiner must explain why the prior art would have suggested to
one of ordinary skill in the art the desirability of the modification. See Fritch, 972
F.2d at 1266, 23 USPQ2d at 1783-84. The Examiner has not provided such an
explanation.
Since we reverse for the lack of the presentation of a prima facie case of
obviousness by the Examiner, we need not reach the issue of the sufficiency of the
rebuttal evidence as allegedly demonstrating unexpected results. See In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
The rejection of claims 1, 5, 7, 11, 19 and 20 under 35 U.S.C. § 102(b) as
anticipated or in the alternative under 35 U.S.C. § 103(a) as obvious over Karl is
reversed.
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