Appeal No. 97-2780
Application 08/456,109
material as proposed by the examiner, would not have made the
modification obvious unless the prior art suggested the
desirability of making the modification. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Moreover, the mere fact that soft foam rubber balls “are
well known in the art,” presumably in the prior art, also is
insufficient basis by itself for establishing the requisite
motivation for modifying the display device of Alton. See
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 USPQ
193, 199 (Fed. Cir. 1983) and Custom Accessories, Inc. v.
Jeffrey-Allan Industries, Inc., 807 F.2d 955, 959, 1 USPQ2d
1196, 1198 (Fed. Cir. 1986). Furthermore, in making a
determination of obviousness under § 103, the criterion is not
measured in terms of what would have been within the level of
ordinary skill in the art as intimated by the examiner on page
5 of the answer. Instead, there must be some teaching,
suggestion or inference in the prior art as a whole or some
knowledge generally available to one of ordinary skill in the
art that would have led one of ordinary skill in the art to
make the modification needed to arrive at the claimed
5
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