Appeal No. 2006-0059 Page 8
Application No. 10/139,397
in other combinations; there must be some teaching, suggestion, or incentive to make
the combination made by the inventor.); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir. 1988). Further, the Examiner
is required to cite evidence, either in the references themselves or in the knowledge
generally available to one skilled in the art, to support her assertions underlying the
prima facie case of obviousness. See In re Kotzab, 217 F.3d 1365, 1371, 55
USPQ2d 1313, 1317 (Fed. Cir. 2000). This applies to all the elements of a prima
facie case of obviousness, including establishing a motivation or suggestion to
combine/modify references. The mere fact that prior art references can be modified
is not sufficient to establish a prima facie case of obviousness. See In re Mills, 916
F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990) (stating that although a prior
art device "may be capable of being modified to run the way the apparatus is
claimed, there must be a suggestion or motivation in the reference to do so").
The Examiner asserts that it would have been obvious to include the take-up
roll on the removable cartridge containing the first and second feed rolls to enable the
operator to simultaneously replace the feed rolls and the take-up roll. We do not
agree. If the modification were performed, the cartridge must be modified to include
a pressure assembly. The pressure assembly is required to attach/compress the
composite structure together. The nip structure disclosed by Bradshaw functions to
compress the layers together and move the product through the apparatus. The
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