Appeal No. 99-2124
Application No. 08/844,830
therefore is uncontroverted on the record that this structure
is not present in UK ‘000.
With regard to the issue of press fitting, we first point
out that 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 which would have led one of ordinary skill in the
art to replace the system disclosed in UK ‘000 with a press
fit locking system, even accepting, arguendo, the examiner’s
conclusion that press-fitting is an equivalent means to
bonding, welding or pinning. This is for two reasons. First,
the problem of alignment and subsequent attachment of the two
sleeve components already has been solved in UK ‘000, and the
examiner has advanced no reason why the proposed change would
be advantageous. Second, such a modification would
necessitate a wholesale reconstruction of the UK ‘000
adjustment and locking system, which would have been a
disincentive to one of ordinary skill in the art to do so.
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