Appeal No. 1999-1039
Application No. 08/876,762
with the claimed shapes and colors resembling detailed
attributes of the surrounding smaller edifices, the examiner
failed to produce such information. In addition, it is clear
from the description and operation of the Nilsson structure
that it was not intended ever to be in a fully collapsed
position, or even in the initial assembly (inclined) position,
with the cover in place over the frame, and therefore the
inventor appears not to have contemplated raising and lowering
the structure repeatedly.
Moreover, in our view, to conclude that the structure is
capable of being operated in the manner set forth in the
appellant’s claims is speculative.
In the final analysis, while the Nilsson structure might
be capable of being modified so that it meets the terms of the
appellant’s claims, the mere fact it 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). We find
such to be lacking here, for the only motivation to modify the
prior art device in the manner proposed by the examiner is
found in the luxury of the hindsight accorded one who first
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