Appeal No. 2005-0812
Application No. 09/792,609
Obviousness cannot be established by combining prior art to
produce the claimed invention absent some teaching or suggestion
supporting the combination. In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The mere fact that the
prior art may be modified in the manner suggested by an examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification. Id.
In the present case, the advantage alleged by the examiner
to justify the proposed combination of Fadner and Guaraldi does
not stand up to close scrutiny. More particularly, the examiner
has not explained, and it is not evident, why a person of
ordinary skill in the art would have found it obvious to
reconstruct the Fadner printing assembly to include the printing
cylinder arrangement taught by Guaraldi in order to print on both
sides of a web at the same time when this objective could be far
more easily accomplished by simply using the Guaraldi apparatus.
Moreover, given the structural differences between the printing
cylinder arrangements respectively disclosed by Fadner and
Guaraldi, the location of Fadner’s “image setting device” within
a reconstructed printing assembly would be unduly speculative.
In this regard, neither Fadner nor Guaraldi expresses any
appreciation of the space saving advantages attributed in the
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