Ex parte SMITH - Page 8




          Appeal No. 1999-0067                                                        
          Application 08/533,305                                                      


          bayonet joint is exposed for engagement by male members                     
          equipped with external means such as screw threads (25 in                   
          Figure 4) or pins (44 in Figures 5-8).  However, this manner                
          of attachment is disclosed only in a situation where the male               
          member merely projects through the center opening in a packing              
          washer (page 4, lines 1-4), and not where axial pressure is                 
          applied to a seal.                                                          
               It is well established 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 Espy or Rudolph which would have led one of                    
          ordinary skill in the art to modify the Espy coupling in the                
          manner proposed by the examiner.  Granted, one of ordinary                  
          skill in the art would have explicitly been taught by Rudolph               
          that a bayonet joint reduces the amount of rotation necessary               
          to accomplish the act of coupling two members together by                   
          means of a rotative connection.  However, from our                          
          perspective, applying this teaching to the Espy coupling would              
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