concurring.
I agree with the majority’s disposition of the rejection of claim 24 under 35 USC 112, and I concur in 'the result reached by the majority on the § 103 issue in this case on the basis of the specified alternative rationale concerning the obviousness of eliminating the Jolly piston structure.
In its initial decision, the board stated:
Appellant objects to [Jolly] because of the relative complexity of the structure disclosed thereby. * * * If the Jolly device were not designed to allow for expansion of the soap when heated, it would be as simple a structure as Appellant’s.
On reconsideration, the board adhered to its view that Jolly’s chamber had a maximum fixed size. However, the board added:
Furthermore, we are still of the opinion that Jolly’s warmer 26 having a container 28 presents a chamber 70 of fixed size which could be used without piston 72 and the related parts which provide control for the expanding lather.
Although not articulated with the utmost clarity, the position of the board which emerges from these passages is that the elimination of the piston and related parts of Jolly’s device would have been obvious to one of ordinary skill in the art. It is clear that appellant recognizes this to have been the board’s view because in his brief, he specifically argues that such a change would not have been obvious since it would be in contradiction to the teachings of Jolly and unsupported by any suggestion or motivation disclosed in this reference.
As I understand it, Joily utilizes the spring-biased piston to avoid a dangerous and undesirable pressure build-up in the container during heating. Other than that, I fail to see any difference in operation between the Jolly apparatus and that claimed. Since there is no size limitation in appellant’s claims, the maximum size of the Jolly chamber can be the same as the fixed size of appellant’s chamber. In such a case, the pressure on the liquid, necessary to maintain appellant’s liquid in the unfoamed state, is at least as great in Jolly’s chamber *1205as it is in appellant’s. The difference is that Jolly has taken a precaution against excessive pressure build-up whereas appellant has foregone such a precaution. I think sacrificing the extra advantage achieved by Jolly by deleting the structure which yields that advantage would have been obvious to one of ordinary skill in the art.
Appellant’s primary arguments against such a modification of Jolly are that it lacks suggestion in the specification and is contrary to pat-entee’s inclusion of the piston elements in the Jolly apparatus. I think both arguments are correct, but fail to compel a conclusion of nonobvi-ousness. The inquiry under § 103 is broader than that implicitly urged by appellant. Under the general test enunciated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), the obviousness or nonobviousness of claimed subject matter is determined against the background of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the pertinent art. This court has held that a tentative conclusion of obviousness may be draivn if the “reference teachings would appear to be sufficient for one of ordinary skill in the relevant art * * * to make the proposed * * * modification.” In re Lintner, 59 CCPA 1004, 458 F. 2d 1013, 173 USPQ 560 (1972). These conformable tests,do not require that the reference specifically motivate the modification. The motivation may well come from the person of ordinary skill if the level of skill in the art is adequate. I think that such is the case in this appeal.
In my view, one of ordinary skill in the relevant art would recognize the ways in which Jolly’s apparatus advance the art. Inherent in that recognition is an appreciation that the omission of elements will result in a concommitant loss in advantages. Thus, this court has previously held that where an additional feature disclosed in the prior art reference is not desired, it would ordinarily be an obvious matter to eliminate it and the function it performs. In re Larson, 52 CCPA 930, 935 340 F. 2d 965, 969, 144 USPQ 347, 350 (1965). I am convinced that Jolly renders obvious the subject matter here on appeal.
Appellant might have shown, if possible, that the danger Jolly feared was nonexistent, or that Jolly’s structure fails to remove the danger. Appellant might have proved that in guarding against the danger of high pressure, Jolly forfeited many benefits which unexpectedly attend the simpler claimed apparatus. These are facts that come to mind which might have been proved to rebut the assumption on which this obviousness rejection is founded, i.e., that the elimination of the piston structure is effected at the sacrifice of the advantages that flow from its inclusion. No such evidence is of record, and in its absence, I would affirm on the stated ground.