Appeal No. 1996-2802 Page 7
Application No. 08/140,142
product does not expand after it is finished. Be that as it
may, it is our view that neither of these references provides
a teaching that can be read upon, or is relevant to, any of the
steps in claim 1.
The examiner’s rationale for combining the references
(Answer, page 4) lacks any cogent explanation of why one of
ordinary skill in the art would have been motivated to modify
the Matthews method for making wafers for use in pressed
construction board or, for that matter, the McCan method for
making wooden fuel pellets of wood shavings, into the method
recited in the appellant’s claim 1. It is axiomatic 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). From our
perspective, the examiner has assembled a collection of
isolated teachings that can be combined in the manner proposed
only by virtue of the hindsight acquired by one who first
viewed the appellant’s disclosure. As our reviewing court
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