Appeal No. 1998-3371
Application 08/614,383
shrinkable . . . of exceptionally low hardness, and great
flexibility and elasticity.” It is the examiner’s position
that one of ordinary skill in the art would have found it
obvious to add the plastomer disclosed in Hazelton to the
rubber of the core of Wood “in order to improve the flexibil-
ity and elasticity of the rubber composition,” with “the
particular statistics for the rebound and forward deformation
. . . being obvious results” (Answer, page 3).
However, 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). Here, we fail to perceive any teaching, sugges-
tion or incentive in either Wood or Hazelton which would have
led one of ordinary skill in the art to replace the rubber
core of the
pressurized Wood tennis ball with a core of rubber and the
plastomer defined in the appellants’ claims. We arrive at
this conclusion because there appears to be no problem in the
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