Appeal No. 1999-1813 Page 5
Application No. 08/801,010
distance between said thick end and said thin end being at least 30 times the thickness of
said thick end.” However, it is the examiner’s position, as stated on page 5 of the Answer,
that
[i]t would have been an obvious design consideration for one of ordinary skill
in the art to form the transition support member of Bell with the
aforementioned [the claimed] dimensions, based upon the type of
floor/flooring to be used with the support and the amount of height differential
and desired transition between the floor heights as discussed above. Note
that the functionality of the Bell device is not destroyed by these
modifications (since the overall system would still function as intended), but
rather the system would be enhanced so that the risk of tripping over the floor
height differential is reduced.
We do not agree with the reasoning or the conclusion.
It is axiomatic that 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). We
fail to perceive any teaching, suggestion or incentive which would have led one of ordinary
skill in the art to modify the Bell mat in the manner proposed by the examiner. Bell
discloses not a transition support for supporting flooring, but a floor mat. While we would
admit that the nosing strip disclosed by Bell inherently provides a transition between areas
of different heights, the reference does not explicitly recognize the problem of providing a
transition which is, to use the language of claim 1, “generally unnoticeable to persons
walking across said tapering section and for generally preventing the jostling of wheeled
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