Appeal No. 2004-1600
Application No. 09/964,149
Claims 1, 2, 9, 10, 12-14, 16, and 19 stand rejected under
35 U.S.C. § 103 as being obvious over Honeycutt in view of
Burbridge.
OPINION
Beginning on page 3 of the brief, appellant argues that
there is no suggestion or motivation to combine Honeycutt and
Burbridge as proposed by the examiner. We agree for the
following reasons.
It is the examiner’s position that it would have been
obvious “to utilize the teachings of Burbridge, in regards to a
seal having a right triangle cross-section configuration, to
increase flexibility of Honeycutt’s flexible finger portions,
such that reduced actuation force is sufficient to actuate said
flexing.” Answer, page 5.
The examiner further states that “one of ordinary skill in
art would reasonably be led to reduce the required actuation
force of Honeycutt’s fingers, since ‘stiff’ fingers requiring
large actuation forces would be susceptible to fractures while
engaging the sliding member.” The examiner states that
“[a]ccordingly, it would have been obvious to one having
ordinary skill to modify Honeycutt the with explicit teachings
of Burbridge.” Answer, pages 5-6.
We note that where an obviousness determination is based on
a combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “[T]he factual inquiry whether to combine references
must be thorough and searching.” McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir.
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