Ex parte ROBERT E. STEELE, et al. - Page 6




          Appeal No. 95-0942                                                          
          Application 07/877,772                                                      


          the problem solved by his invention is controlling the tension              
          placed upon the wrapping sheet as the wrapping apparatus moves              
          about the pipe (column 1).                                                  
               Koopman is directed to discrete sections of pipe, which can            
          be held in a fixture (see drawing).  In the Koopman system, at              
          room temperature an entire section of pipe is covered with a                
          continuous wrap impregnated with resin, subsequent to which                 
          induction heating is applied to the pipe section in a number of             
          back and forth passes until the resin is caused to flow.  A                 
          second induction heating step then cures the resin.  See column             
          2, line 54 et seq., and claim 1.                                            
               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 the references            
          which would have led one of ordinary skill in the art to modify             
          Tailor in the manner proposed by the examiner.  First of all, to            
          substitute for Tailor's individual sheet wrapping system the                
          continuous wrapping system disclosed by Lindsey amounts not to a            
          modification of Tailor, but to a discarding of the Tailor                   
          invention in its entirety.  Second, Koopman does not teach                  

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