Appeal No. 96-1901
Application 07/925,790
relationship between the discs and the fishing line, the discs are canted apart at the bottom by a pair of
rollers (75, 76), so that the fishing line is introduced between spaced surfaces of the discs, and is then
clamped by these surfaces as they rotate and the space is eliminated (column 4). Thus, the Haines
system differs from that of the appellant’s invention in that it operates upon a thin line, which has
essentially no surface area, rather than on a flexible pipe, which has a considerable surface area, and
places tension upon the line by clamping it between the discs rather than by controlling the amount of
surface area of the pipe that contacts the discs.
The mere fact that a 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). There must be some reason why one of ordinary skill
in the art would have been led to modify a prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). To this end,
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
appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Here, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the Parola system in the manner proposed by the examiner.
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