Appeal No. 1999-1064 Page 7
Application No. 08/654,766
reference, stating only that the basis is the “conventionality”
established by the Japanese publication and Urquhart (Answer,
page 4). However, it is axiomatic that 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, for example, In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The crux
of the operation of the solid piece in the British reference is
the containment of the oil around a waist portion by a closely
fitting flange. Therefore, absent evidence to the contrary,
from our perspective it would appear that the modification
proposed by the examiner would cause the system disclosed in
the British reference to become inoperative, which would have
been a disincentive for one of ordinary skill in the art to
make the proposed change. We further point out that the plug
disclosed in the Japanese reference is not “a solid piece”
(emphasis added), as required by the four independent claims
and that it is cup-shaped; thus, while it has a uniform
diameter along its entire length, it does not have an
essentially uniform cross-sectional area. The same can be said
for the Urquhart plug, which is hollow and is tapered at one
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