Appeal No. 2000-0590 Page 7
Application No. 08/019,500
along with the vertical roll and its chuck by the action of a pair of spaced screws located
remotely from the chuck. While Bond teaches that it was known in the art at the time of the
appellants’ invention to adjust the horizontal position of the vertical roll more directly by
screw means mounted in the vertical roll guide means, the mere fact that the Soderberg
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 Soderberg or Bond which would have led one of ordinary
skill in the art to modify the Soderberg apparatus by replacing the disclosed adjustment
means with the one of Bond. Moreover, to do so would necessitate a wholesale
reconstruction of the Soderberg rolling mill, in the course of which what is characterized by
Soderberg as “a novel and important” feature of the invention would be discarded; that, in
our opinion, would act as a disincentive for one of ordinary skill in the art to do so.
In addition, even if one were to combine the two references in the manner proposed
by the examiner, the resulting construction would fail to include the separate spaced-apart
top and bottom support plates for the roll axle and the two part guide frame, which the
appellants assert provides advantages over the prior art systems and which the examiner
has simply written off, without providing any reasoning or evidence, as design choices.
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