Appeal No. 2000-1715 Page 5
Application No. 08/925,053
Sneider discloses a bellows-type syringe in which the bellows rings successively
increase in diameter from the rearward portion to the forward portion (Figure 1) which, the
examiner apparently believes, confirms his opinion that it would have been obvious to
reverse the parts in the Drewe syringe (Answer, page 4). However, from our perspective,
the issue is not so simple. As noted above, the Drewe syringe injects a substance when it
is collapsed. However, its rearmost bellows ring, which is larger than the others, allows it
to perform the additional function of aspirating prior to the injecting step, and this operation
requires that the largest bellows ring be “independently collapsible” and to respond to a
pressure that is less than that required to collapse the other rings (column 3, lines 48-71).
In this regard, the reference states that the factors affecting the operation of the bellows
rings include the external diameter (column 3, line 6).
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,
modifying the Drewe syringe by reversing the direction in which the diameters decrease
would constitute a significant reconstruction of the device which might jeopardize the
aspirating function, that is, to cause it not to be operable for its intended purpose. In our
opinion, this would operate as a disincentive to one of ordinary skill in the art to do so. In
this regard, while the examiner apparently finds suggestion to do so in Sneider’s statement
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