Appeal No. 1997-4213
Application No. 08/359,407
“dig” into the support to prevent the clip from jarring loose
“as friction alone will not work satisfactorily when a clip is
used on a moving support” (column 2, lines 10-14).
It is the examiner’s position that it would have been
obvious to one of ordinary skill in the art to provide the
clip of O’Brien with a projection, as shown by Brozak, “to
better secure the clip,” and that the type of clip “can be a
matter of engineering choice; for example it could be a tooth
as shown by Fearing if a stronger securing means were desired”
(Answer, page 4). We do not agree.
Our rationale for arriving at this conclusion begins
with the recognition that 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). We fail to perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to modify the O’Brien device in the manner
proposed by the examiner. The primary reason for this is that
O’Brien has recognized the problem enunciated by the
appellant, and already has solved it by the use of the clip
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