Appeal No. 2004-1908
Application No. 09/176,374 Page 7
desired shape of the container in which the subassembly
is to be placed, one of [ordinary] skill [in the art]
would be motivated to alter the shape of Machida et al.
However, on this record, we disagree with the examiner’s
views on this matter. At the outset, we note that “Before the
PTO may combine the disclosures of two or more prior art
references in order to establish prima facie obviousness, there
must be some suggestion for doing so, found either in the
references themselves, or in the knowledge generally available to
one of ordinary skill in the art.” In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992); In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988).
Here, the examiner makes reference to Takeuchi to support
the asserted motivation for the proposed modification of Machida.
However, as pointed out by appellant, Machida (column 2, lines
62-65) expressly teaches that “the electrode members are not
forcibly bent anywhere. Therefore, the electrode members are not
damaged, and an objectionable short-circuit in the cell can be
prevented.”
Given that the examiner’s proposed modification would run
counter to the express disclosure of Machida that teaches against
bending the electrodes and that the examiner has not addressed
that conflict in the teachings of Machida and Takeuchi regarding
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