Appeal No. 2000-2116 Page 7
Application No. 09/246,460
We find the examiner’s rejection to be defective. 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. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). In the present case, the examiner has not set out, and we fail to
perceive on our own, any teaching, suggestion or incentive which would have led one of
ordinary skill in the art to modify the Tobias apparatus in the manner proposed by the
examiner. In fact, there is a disincentive to do so, for the Tobias system does not include a
closed tailgate position and to change this not only would run contra to Tobias’ teachings,
but would require that additional modifications be made that would substantially alter the
structure and operation of the Tobias invention. Even assuming, arguendo, that
suggestion exists for combining the references, since the screw conveyor shaft in the
Tobias truck body must extend through the rear opening in the receptacle to operate the
spreader device, merely substituting another type of feedgate, such as a rotatable one,
would not result in achieving the closed position required by claim 76. Combining the
references also would fail to result in an apparatus that meets the requirement that the axis
of rotation for the feedgate be “at least closely adjacent to” the base plane of the
receptacle, for the axis of rotation of the tailgate in Park is well above the base of the
receptacle.
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