Appeal No. 2004-1395 Page 7
Application No. 09/407,053
In our view, the combined teachings of Carlston and Magowan would not have
led one of ordinary skill in the art to have modified Carlston to arrive at the claimed
invention for the reasons set forth by the appellant in the briefs. We fail to find
sufficient motivation in the teachings of Magowan for one skilled in the art not to follow
the specific teachings of Carlston that the elastomeric spring fold and flex rather than
compress and that the outside diameter minus the inside diameter of the spring is less
than the solid height of the spring. As such, we conclude that it would not have been
obvious at the time the invention was made to a person of ordinary skill in the art from
the combined teachings of Carlston and Magowan to have modified the toroid springs
of Carlston to have an outside diameter minus an inside diameter equal to or greater
than a height when positioned in the bearing pad assembly.1
For the reasons set forth above, the decision of the examiner to reject claim 15,
and claims 19 and 20 dependent thereon, under 35 U.S.C. § 103 is reversed.
Claims 1, 3, 5 to 8, 10 to 14, 17, 18, 21 and 22
We have reviewed the references to Platkiewicz, Curtis and Spencer additionally
applied in the rejection of claims 1, 3, 5 to 8, 10 to 14, 17, 18, 21 and 22 but find
1 The mere fact that the prior art could be modified in the manner suggested by the Examiner
does not make such a modification obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
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