Appeal No. 2002-1972 Page 7
Application No. 09/394,722
dimensional design on the obverse side while the reverse side is flat and is provided
with a clip by which the earring is attached to the wearer’s ear. The examiner has
concluded, without evidence or explanation, that the earring is “in the shape of a three
dimensional yin-yang symbol” (Paper No. 11, page 3), apparently because it is circular
and its ornamentation includes a sigmoid line. The examiner admits that the Philippe
earring “does not disclose that the reverse side has a depressed section,” but takes the
position that this feature is “a design choice that would have been obvious to one of
ordinary skill in the art of sculptures for the purpose of providing a similar appearance to
both sides of the structure, such [that] a viewer may see the same structure when
looking at either side” (Paper No. 11, page 3).
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, USPQ 1125, 1127 (Fed. Cir. 1984). All of the
appellant’s claims require that there be elevated and depressed sections on both faces
of the emblem, and that the elevated section on each of the faces have directly
underneath the depressed sections of the other face. Considering that the reverse side
of the Philippe earring appears not to be intended to be visible when worn, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary
skill in the art to modify the earring in the manner proposed by the examiner, that is, to
provide the elevated and depressed sections on both faces. Moreover, merely
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