Appeal No. 97-3214
Application No. 08/280,369
of the Matsunaga thread sled be altered to the arrangement
recited in claim 1. The same can be said for Brand. The mere
fact that the prior art structure could be modified does not make
such a modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). From our perspective,
suggestion for combining the references in the manner proposed by
the examiner is found only in the hindsight accorded one who
first viewed the appellant’s disclosure. This, of course, is
impermissible. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
It is our opinion that the teachings of the references
applied fail to establish a prima facie case of obviousness with
regard to the subject matter of claim 1. Therefore, the
rejection of independent claim 1 and, it follows, of dependent
claims 2-8, cannot be sustained.
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