Ex parte ROSS, JR., et al. - Page 6

          Appeal No. 96-0037                                                          
          Application 08/237,224                                                      

          The requisite motivation must stem from some teaching, suggestion           
          or inference in the prior art as a whole or from the knowledge              
          generally available to one of ordinary skill in the art and not             
          from the appellants' disclosure (see Uniroyal, Inc. v. Rudkin-              
          Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed.                 
          Cir.), cert. denied, 488 U.S. 825 (1988)).  The examiner has not            
          met this burden.  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.             
               For the reasons expressed above, it is our view that the               
          teachings of Barnes do not establish a prima facie case of                  
          obviousness with regard to the claimed subject matter.  This                
          being the case, we will not sustain the rejection.                          


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