Ex parte WALKER - Page 8

          Appeal No. 1999-1042                                       Page 8           
          Application No. 08/781,220                                                  

          that the three-sided devices of Russo or Schwartz be modified               
          so that they have five sides.  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 point out that neither of              
          the primary references teaches that the devices disclosed                   
          therein are capable of or intended to service more than one                 
          patient and that the “flat-cornered triangular medical column”              
          disclosed in each appears to be a basic feature of invention.               
          Therefore, we fail to perceive any motivation for making the                
          change proposed by the examiner.  In addition, in the absence               
          of a teaching to treat more than one patient from the same                  
          column, we do not agree with the examiner that one of ordinary              
          skill in the art would have been motivated to place gas outlets             
          on all sides of the Russo and Schwartz devices.  Lastly, since              
          minimizing the space of the base portion of the devices,                    
          through which gas is supplied, appears not to be a concern of               
          either Russo or Schwartz, we also cannot agree that it would                
          have been obvious to make the width of the planar side panels               

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