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.
1984).
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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