Appeal No. 1997-3515
Application No. 08/390,226
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). In
the present case, it is not apparent to us from the examiner’s
explanation of the rejection how the teachings of the several
references would have melded together to suggest the claimed
construction to one of ordinary skill in the art. Left to our
own devices, we fail to perceive any teaching, suggestion or
incentive in the applied references which would have motivated
an artisan to modify the Norman or Bloomquist arrangements in
such a fashion as to meet the terms of claim 1. From our
perspective, the only suggestion for putting selected pieces
from the five references together in the manner proposed by
the examiner is found in the luxury of the hindsight accorded
one who first viewed the appellants’ disclosure. This, of
course, is not a proper basis for a rejection. See In re
Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
We therefore conclude that the combined teachings of the
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