Appeal No. 98-3327
Application No. 08/606,651
However, no evidence has been provided in support of this
conclusion, which relegates it to the status of
unsubstantiated opinion. The examiner then moves on from this
to the further conclusion that the presence of such knowledge
in the art in and of itself would have made it obvious to
substitute molding in place for other methods of attachment.
We cannot agree, for even taking the examiner’s first
statement at face value, 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). The examiner has not set forth, and we
are at a loss to perceive on our own, any teaching, suggestion
or incentive which would have led one of ordinary skill in the
art to modify the Easley probe in the manner proposed by the
examiner. That is, why would one of ordinary skill in the art
have been motivated to discard the attachment means disclosed
by Easley in favor of the one in which the soft tip is molded
in place to the inner bushing of the needle. From our
perspective, the only suggestion for doing so is found in the
luxury of the hindsight afforded one who first viewed the
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