Appeal No. 2005-2698 Παγε 7
Application No. 10/316,636
For the following reason, we do not agree that the applied references would have
suggested such a modification.
The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In
re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Bok and Souetre disclose
alternative ways of optimizing carbon disk wear while minimizing the piston travel.
Souetre discloses the spacer insertion technique as a preferred alternative to the
differential rotor-stator thickness technique of Bok, not as a supplement thereto. Neither
Bok nor Souetre provides any teaching or suggestion to combine the two alternative
techniques.
In light of the above, we cannot sustain the examiner's rejection of independent
claims 1, 20 and 31, or claims 2-10, 21-30 and 32 which depend therefrom, as being
unpatentable over Bok in view of Souetre.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 CFR § 41.50(b), we enter the following new
ground of rejection.
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