Appeal No. 2000-1474 Page 17
Application No. 08/962,902
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991) (citations omitted). That is, something
in the prior art as a whole must suggest the desirability, and
thus the obviousness, of making the combination. See In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992); Lindemann Maschinenfabrik GmbH v. American Hoist and
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984).
As set forth in the examiner's rejection of claims 2, 8,
22, 24-30 and 34-37 (final rejection, pp. 5-15), the examiner
determined that Mueller does not teach the claimed lower
portion (final rejection, p. 5). To supply this omission, the
examiner made determinations that the claimed lower portion
would have been obvious to an artisan from either Kondo,
Okumura, or Gojo. We do not agree.
In our view, the only suggestion for modifying Mueller in
the manner proposed by the examiner stems from hindsight
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