Appeal No. 98-1233
Application No. 08/612,045
We will not support the examiner's position. While the
examiner opines that it would have been obvious to provide the
plaster guard of Bergmann with a coacting tool "in order to
provide means to test actuation of the valve," we must point
out the mere fact that the prior art could be modified would
not have made the modification obvious unless the prior art
suggested the desirability of the modification. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992) and In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Here, there is no such suggestion. As
the examiner recognizes, the plaster guard of Bergmann has no
tool whatsoever. In order to overcome this deficiency the
examiner has relied upon the teachings of Carlson, contending
that Carlson teaches a "guard" portion at 23 and a tool
portion at 24. We observe, however, that while the element 23
of Carlson may have the capability of being used as a guard,
there is no teaching or suggestion in Carlson of doing so. To
the contrary, Carlson describes the element 23 as a "threaded
stud" which is used to engage the threads on collar 17 for the
purpose of removing it from the valve in order that the valve
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