Appeal No. 1999-0055 Page 6
Application No. 08/703,545
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). This being the
case, we fail to perceive any teaching, suggestion or incentive in Conley which would have
led one of ordinary skill in the art to modify the Freed valve seat members in the manner
proposed by the examiner, other than the hindsight afforded one who first viewed the
appellants’ disclosure. This, of course, is not a proper basis for a rejection under Section
103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
Moreover, since one of the objectives of the Freed invention is to preclude significant
altering of the dimensions of the seat member in the presence of high applied pressures
by allowing cold flow of the plastic in the valve seat body from more dense portions to less
dense portions, which is accomplished by the perforated reinforcing frame, it is our view
that replacing the perforated frame with a solid frame would cause the Freed valve seat
members not to perform in accordance with the invention. From our perspective, this
would have operated as a disincentive to the artisan to make the change.
It is our conclusion that the combined teachings of Freed and Conley fail to
establish a prima facie case of obviousness with regard to the subject matter recited in
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