Appeal No. 2004-1992
Application No. 10/223,982
See Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353,
1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); Gordon, 733 F.2d at
902, 221 USPQ at 1127 (if a proposed modification would render
the prior art device being modified unsuitable for its intended
purpose, the proposed modification would not have been obvious).
Fourth, the examiner’s position (answer, page 2) to the
effect that the claimed invention would have been obvious because
no unexpected results are seen as compared to the bow of Ramirez
is not persuasive because unexpected results are not a
requirement for patentability under 35 U.S.C. § 103(a).
Fifth, the examiner’s further position that it would have
been obvious in combining the references to eliminate the
stiffening wires of Ruff from the proposed reference combination
because “it is well settled that deletion of an element . . .
with subsequent loss of its function would [have been] obvious”
(answer, page 8) is not well taken. While there is some support
in the case law for the principle that omission of an element and
its function involves only routine skill in the art (see, for
example, In re Karlson, 311 F.2d 581, 584, 136 USPQ 184, 186
(CCPA 1963)), the court has also recognized that this is not a
mechanical rule, and that the language in Karlson was not
intended to short circuit the determination of obviousness
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