Appeal No. 1999-2107 Page 7
Application No. 08/926,299
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 in the two applied references which would have led
one of ordinary skill in the art to modify the Vermonet shoe in the manner proposed by the
examiner since there appears to be no reason to do so. From our perspective, the only
suggestion for doing so is found in the luxury of the hindsight afforded one who first viewed
the appellant’s disclosure. This, of course, is not a proper basis for a rejection under
Section 103. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
The combined teachings of Vermonet and Vaccari therefore fail to establish a
prima facie case of obviousness with regard to the subject matter of claim 27 and we will
not sustain the rejection of claim 27 or of claims 30-32, which depend therefrom.
Independent claim 33, while directed to a method for protecting feet, requires the
presence of a built-in pump. The same is true of independent apparatus claims 34 and 43,
and independent method claim 48. On the basis of the same reasoning, we will not
sustain the rejection of these claims or the claims that depend from them.
The Rejection Under Section 135(b)
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