Appeal No. 2000-1465 Page 6
Application No. 09/037,485
decorative cover (52) that is of sufficient diameter to cover the annular flange, so that any
staining that may occur on the flange is hidden from the user’s view (column 5, lines 4-12).
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 reference which would
have led one of ordinary skill in the art to modify the Bergin strainer in the manner
proposed by the examiner. Mowery teaches that the problem of stained flanges can be
solved by providing a stopper large enough to cover the flange and hide it from view, so
that stains are not seen by the user. Therefore, one of ordinary skill would be instructed by
Mowery to provide the Bergin strainer assembly with a large stopper, not to make the one
piece assembly (10) into two pieces. There is no explicit teaching in Bergin that making a
strainer assembly such as that of Bergin of two pieces rather than one would facilitate
assembly and replacement, as alleged by the examiner. Such a teaching might, however,
be implied when the casing has a laterally extending element, such as Mowery’s threaded
projection (34), which cannot be removed through the opening in the sink. Of course, this
is not the case in Bergin. Finally, even if one were to combine the teachings of the two
references in the manner proposed by the examiner, that is, separate the Bergin housing
into two pieces, one screwed into the other, in our view the result would not include inner
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