Appeal No. 2004-1992
Application No. 10/223,982
view of the teachings of the applied references to include a die
cut ribbon in the decorative bow of Ramirez “in order to provide
a contrived structure” (answer, page 21).
It is true that the elongated base ribbon 11 of Ruff with
its spaced apart decorative members 12, fingers 13 and symbols 16
is visually similar to appellants’ die cut piece 16 having a
spine and at least one design artifact. However, that is not
enough to demonstrate the obviousness of the claimed subject
matter, for the mere fact that the prior art structure could be
modified does to make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
It is on this point that the examiner’s rejection is defective,
from our perspective. On the basis of the considerations that
follow, we fail to perceive any teaching, suggestion or incentive
in either of the references which would have led one of ordinary
skill in the art to modify the bow of Ramirez in the manner
proposed by the examiner.
1The page numbering in the examiner’s answer appears to be
incorrect in that the third page is numbered “page 2” with the
pages that follow being consecutively numbered in ascending
order. For convenience, we shall use the page numbers as found
in the answer in referring to particular pages of the answer.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007