Appeal No. 1998-1258 Page 6
Application No. 08/442,676
powdered coal and then charging them with gas at a pressure sufficiently high to force the
coal into the furnace against the pressure existing therein. We specifically take note of the
fact that this reference does not utilize a porous bed in communication with the reservoir of
powdered coal.
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). In the
present case, we fail to perceive any teaching, suggestion or incentive in either reference
which would have led one of ordinary skill in the art to modify Boyhan in the manner set
forth by the examiner. To do so would require: (1) that the Boyhan invention be converted
from loading discrete articles to loading particulate material;
(2) that a porous bed that permits the passage of gas but prohibits the passage of the
particulate material be provided beneath the plate in which the apertures are located; and
(3) that the gravity-operated loading mechanism disclosed by Boyhan be discarded in
favor of a gas-operated system. Such a wholesale reconstruction essentially destroys the
Boyhan invention, which would act as a disincentive to one of ordinary skill in the art to do
so. In our opinion, the only suggestion for making the changes set forth by the examiner is
found in the hindsight afforded one who first viewed the appellants’ disclosure. This, of
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