Appeal No. 2000-2180 Page 7
Application No. 08/919,866
Of course, 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). In the
present situation, in view of the requirements in Bennett that the bearing must be simple in
construction and must seal the inner space from contaminants such as sawdust, which are
advantages not set forth in Barton and which appear not to be inherent therein, it is our
opinion that the modification proposed by the examiner would compromise the objectives
of the Bennett invention and thus would operate as a disincentive to one of ordinary skill in
the art to replace the disclosed bearing ring with a ball bearing arrangement. From our
perspective, the rejection is fatally defective at this point for even if one concedes,
arguendo, that Bando is analogous art, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the art to replace the bearing
disclosed by Bennett with a roller bearing, other than the hindsight afforded one who first
views the appellants’ disclosure. Insofar as the examiner’s assertion that suggestion is
provided by the fact that the Barton bearings provide both thrust and journal loading, it is
our opinion that although not explicitly explained in the Bennett patent, one of ordinary skill
in the art would have recognized that the bearing ring disclosed by Bennett also
accommodates both thrust and journal loading, by virtue of the presence of both the flat
surfaces of the bearing ring and the upwardly extending protrusions that are received in the
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