Appeal No. 2000-1661 Page 5
Application No. 08/964,460
We reach the opposite conclusion, however, with regard to independent claim 21
and those claims depending therefrom. Claim 21 recites a first channel having a vertical
slot at one end, and a flexible member having a first side fixedly attached to a first edge of
the slot and a second side abutting the second edge of the slot. Such structure clearly is
not shown by Amey. It is the examiner’s position, however, that one of ordinary skill in the
art would have found it obvious to modify the Amey construction in such a manner as to
meet the terms of the claim in view of the teachings of Reuter. In particular, the examiner
focuses on flexible seal 116 in the horizontal wireways of Reuter’s Figure 11, opining that
the Amey and Reuter seals are but “alternate conventional electrical wiring channel
structure” but the Reuter seal “facilitates insertion and removal” of the wires (Answer, page
4). The appellant argues in rebuttal that one of ordinary skill in the art would have been
taught by Reuter that for vertical wireways lay-in slotted liners should be used, as is shown
and described with regard to element 124 of Figure 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,
Reuter discloses one construction for horizontal wireways and another for vertical
wireways. This being the case, in the absence of evidence to the contrary, which has not
been provided by the examiner, we agree with the appellant that one of ordinary skill in the
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