Ex parte KRIVEC et al. - Page 7




          Appeal No. 2001-0099                                                        
          Application No. 09/042,431                                                  


          circumference and a pin extending from only one side of the                 
          rod.                                                                        
               While the examiner may be correct that the substitution                
          of the button and pin arrangement taught by Kentish for that                
          disclosed by Mesenhöller would perform substantially the same               
          function in substantially the same manner to produce                        
          substantially the same results, thereby making the proposed                 
          modification feasible, the mere fact that the prior art could               
          be so modified would not have made the modification obvious                 
          unless the prior art suggested the desirability of the                      
          modification.  See In re Mills, 916 F.2d 680, 682, 16 USPQ2d                
          1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902,               
          221 USPQ 1125, 1127 (Fed. Cir. 1984).  In this instance, the                
          prior art discloses a slider ring and through pin arrangement               
          in combination with two angular slots (Mesenhöller first                    
          embodiment) and a button and non-through pin arrangement in                 
          combination with a single elongate slot (Mesenhöller second                 
          embodiment and Kentish).  We find nothing in the teachings of               
          Mesenhöller and Kentish which would have suggested a button                 
          and non-through pin arrangement in combination with an angular              
          slot (i.e., an engagement slot having first and second slot                 
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