Appeal No. 99-0228
Application No. 08/721,504
wholesale reconstruction of the Dann device, which constitutes
a second disincentive. 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 in either of the applied references
which would have led one of ordinary skill in the art to
modify the Dunn punch in such a fashion as to meet the terms
of claim 1. These references fail to establish a prima facie
case of obviousness with regard to the subject matter recited
in
independent claims 1 and 13, and we therefore will not sustain
the rejection of these claims or, it follows, of claims 2-12
and 14-16, which depend therefrom.
NEW REJECTION
Pursuant to our authority under 37 CFR § 1.196(b), we
make the following new rejection:
Claims 13 and 14 are rejected under 35 U.S.C. § 102(b) as
being anticipated by MacGregor.
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