Appeal No. 98-1554 Page 7
Application No. 08/586,894
less a teaching that Inconel 600 exhibits the property of low
heat conducting capability, which is required by claim 16.
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). We fail to perceive any teaching, suggestion or
incentive in either Schatz or Engineering Materials which would
have led one of ordinary skill in the art to form the lines of
Schatz of a metal having a low heat conducting capability
rather than of plastic, as disclosed by Schatz, other than the
hindsight acquired by one who first viewed the appellant’s
disclosure. This, of course, is not a proper basis for a
rejection under Section 103. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
The teachings of the two applied references therefore fail
to establish a prima facie case of obviousness with regard to
the subject matter of independent claim 16 or, it follows, of
the claims dependent therefrom.
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