Ex Parte STRUMOLO et al - Page 8




               Appeal No. 2005-0994                                                                           Page 8                   
               Application No. 09/432,485                                                                                              



               representative of a desired portion of a vehicle and a paint spray gun simulation as                                    
               recited in claims 1 to 6.                                                                                               


                       The combined teachings of the Kinema/SIM Manual and Miller are suggestive of                                    
               utilizing the interactive software tool taught by the Kinema/SIM Manual to predict paint                                
               particle trajectories from a bell sprayer as taught by Miller.  The combined teachings of                               
               the Kinema/SIM Manual and Miller are not suggestive of a system or method for                                           
               designing a vehicle which utilizes both a computer aided design (CAD) model                                             
               representative of a desired portion of a vehicle and a paint spray gun simulation as                                    
               recited in claims 1 to 6.4                                                                                              



                       4While a rejection of claims 1 to 6 under 35 U.S.C. § 103 based on the combined                                 
               teachings of the Kinema/SIM Manual, Strumolo and Miller is not before us in this                                        
               appeal, we nevertheless wish to point out that the combined teachings of the                                            
               Kinema/SIM Manual, Strumolo and Miller are likewise not suggestive of a system or                                       
               method for designing a vehicle which utilizes both a computer aided design (CAD)                                        
               model representative of a desired portion of a vehicle and a paint spray gun simulation                                 
               as recited in claims 1 to 6.  The combined teachings of the Kinema/SIM Manual,                                          
               Strumolo and Miller are suggestive of utilizing the interactive software tool taught by the                             
               Kinema/SIM Manual to both predict sound pressure levels within a vehicle as taught by                                   
               Strumolo and to predict paint particle trajectories from a bell sprayer as taught by Miller.                            
               The mere fact that the prior art could be modified in a manner to arrive at the claimed                                 
               subject matter does not make such a modification obvious unless the prior art                                           
               suggested the desirability of the modification.  See In re Gordon, 773 F.2d 900, 902,                                   
               221 USPQ 1125, 1127 (Fed. Cir. 1984).                                                                                   









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