Appeal No. 99-0643 Page 7
Application No. 08/828,225
However, we do not agree with the examiner's position
that
It would have been an obvious change of shape to one
of ordinary skill in the art to make the cylindrical
tube 20 rectangular instead of circular since both
configurations provide the same function in
substantially the same manner to produce the same
results [answer, page 3].
While it may be true that the Nagy security device could
be modified as proposed by the examiner to make the
cylindrical tube (20) rectangular instead of circular while
still providing the same function in substantially the same
manner to produce the same results, the examiner has supplied
no evidence that the prior art suggests the desirability of
such a modifiction. See In re Mills, 916 F.2d 680, 682, 16
USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) ("The mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification."). In our view, the only
suggestion for modifying Nagy in the manner proposed by the
examiner to meet the above-noted limitations stems from
impermissible hindsight knowledge derived from the appellant's
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