Appeal No. 1998-1787 Page 6
Application No. 08/151,257
diameter. Accordingly, the examiner relied on the teachings
of Onishi as providing the evidence that would have led one of
ordinary skill in the art to combine the relevant teachings of
the references to arrive at the claimed invention. However,
the mere fact that the prior art may be modified in the manner
suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. See In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We have reviewed the teachings of Onishi and fail to
find any motivation therein that would have suggested
modifying Stevens' or Koch's ribs to have a lead equal to
between 0.8 and 0.9 times the square root of the mean inside
pipe diameter. Thus, it is our view that the only suggestion
for modifying Stevens or Koch in the manner proposed by the
examiner to meet the above-noted limitations stems from
hindsight knowledge derived from the appellants' own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
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