Appeal No. 2000-2016 Page 8
Application No. 09/209,837
one of ordinary skill in the art to modify the Cox device by replacing the clamping band with
the screw-on system of Soussloff “in order to provide a secure axial connection that cannot
readily fall apart unless all the threads are disengaged from one another” (Answer, page
4).
We do not agree. The fact that the prior art structure could be modified does not
make such a modification obvious in the absence of the prior art suggesting the
desirability of doing so (In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 984)). Here, the examiner has provided no clue as to where support is found for the
reasoning set forth as the suggestion to combine the references, and therefore it stands
merely as the examiner’s unsupported opinion. This being the case, the question arises
as to why one of ordinary skill in the art would have been led to substitute one means for
clamping a hollow cylindrical body to a cylindrical sleeve for another, that is, what
advantage would be gained by replacing the clamping band system disclosed by Cox with
the screw and tapered clamping sleeve system of Soussloff. We find none in expressed in
the references, and it thus would appear that the only motivation for doing so is found in the
hindsight afforded one who first viewed the appellant’s disclosure. This, of course, is not a
proper basis for a rejection under Section 103.
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