Appeal No. 1998-2726
Application 08/440,991
level at which the potting material is shown in the containers
Figures 3 and 4 of the drawings, it is our view that one of
ordinary skill would have perceived that the curved upper
portions of the second pair of sides merely are ornamental,
and are not meant to provide additional means for retaining
the potting material, as is urged by the examiner.
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 of
the references which would have led one of ordinary skill in
the art to modify the module disclosed in the European
reference by adding an outwardly extending fence to the top of
the side walls, as is required by claim 1.
It therefore follows that the combined teachings of the
applied references fail to establish a prima facie case of
obviousness with regard to the subject matter of claim 1, and
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