Appeal No. 97-3551
Application No. 08/342,759
first embodiment of the Very invention be replaced by a coil
spring installed about the inner elongated tube, “motivated by
the teaching of being able to shift the location of the spring
without a change in function” (Answer, page 4). We do not
agree. The mere fact that the prior art structure could be
modified does not make such a modification obvious absent
suggestion of the desirability of doing so. See In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Very
discloses two different ways of solving the same problem. The
fact that all of the elements needed to construct the
appellant’s claimed invention can be found in the two Very
embodiments is not enough to establish a prima facie case of
obviousness. There must be some reason why one of ordinary
skill in the art would have selected certain elements from
each embodiment and combined them in such a manner as to meet
the terms of the claims on appeal. In our opinion, this is
where the rejection fails. We cannot perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to combine the teachings in the manner
proposed by the examiner, that is, to substitute a spring
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