Appeal 2006-1521
Application 09/815,877
of reclosing the port of Berke [ ] once the permanent seal has been broken”
(Answer 3) fails to take into account the different properties of the inlet port
material in Dickerhoff and Berke.
In this latter regard, the Examiner states that because the “snaps” of
Dickerhoff apparently are semi-rigid, the snaps “could in fact be used within
a semi-rigid structure [i.e., Berke’s semi-rigid collar] because of its [i.e., the
snaps’] own semi-rigid properties” (emphasis added) (Answer 4). In the
first place, this statement is based on unsupported speculation by the
Examiner rather than evidence. Secondly, the mere fact that references can
be combined or modified does not render the resultant combination obvious
unless the prior art also suggests the desirability of the combination. In re
Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir.1990). We fail to see any
reason why one of ordinary skill in the art would have been motivated to
combine a flexible tube closing mechanism (i.e., “snaps”) with a semi-rigid
collar based on a reasonable expectation of success. It is appropriate here to
emphasize that prior art can be modified or combined to reject claims as
prima facie obvious only if there is a reasonable expectation of success.
In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Dickerhoff’s snap closure mechanism is disclosed for use with
flexible inlet ports (i.e., ones where opposing sides can be brought together).
Berke discloses that his collar is semi-rigid to prevent the flexible walls of
the blanket from collapsing or partially folding at the inlet port thereby
impeding air flow (col. 5, ll. 12-16). There is no reasonable expectation that
combining a flexible tube closure device with a semi-rigid collar would be a
successful combination. In fact, how a flexible tube closure would be
combined with a semi-rigid collar is unclear. The Examiner’s statement,
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