Appeal No. 2005-0777
Application No. 10/081,881
As correctly argued by appellants (Brief, pages 5-8), both
Hahn and Kataoka fail to disclose that the tube or roller is
deformable, and neither suggest any desirability for the tube or
roller to be deformable. Therefore appellants correctly argue
that there is no motivation shown by the examiner to include the
rubber cord of the admitted prior art into the device of either
Hahn or Kataoka (Brief, page 7). See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)(The mere fact that the
prior art could be so modified does not make the modification
obvious unless the prior art suggested the desirability of the
modification); In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999)(the showing of evidence of a
motivation, suggestion or teaching to combine the references must
be clear and particular).
Additionally, even assuming arguendo that the examiner
established some motivation for using the rubber cord of the
admitted prior art in the devices of Hahn and Kataoka, the
examiner has not established any convincing reasoning or
motivation for employing a “soft vinyl” tube instead of the
rubber cord, as required by claims 4 and 7 (Brief, pages 8-9).
The examiner’s statement that use of vinyl rather than rubber
would have been an “obvious choice of design” (Answer, pages 4-6)
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