Appeal No. 1998-2512 Page 7
Application No. 08/618,593
providing no new or unexpected results” (Answer, page 4). We
cannot subscribe to this reasoning. 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, for example, In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We fail to perceive any such suggestion, teaching or
incentive, noting that the changes proposed by the examiner
would result in a wholesale reconstruction of the Kuhar
invention. From our perspective, the only suggestion to do so
resides in the luxury of the hindsight afforded one who first
viewed the appellants’ disclosure which, of course, is not a
proper basis for a conclusion that an invention would have been
obvious. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
A prima facie case of obviousness therefore has not been
established with regard to the subject matter of claim 1, and
we will not sustain the Section 103 rejection of claim 1 or, it
follows, of claims 2-24, which depend therefrom.
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