Appeal No. 1999-2182 Page 6
Application No. 08/710,704
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). In the present case, it cannot be stated with certainty that the inward dimple in
the primary reference even inherently inhibits the pump tube from sideways movement.
This being the case, while it might have been obvious to install the refilling mechanism of
Grothoff in the ENGLASS dispenser, which would eliminate the closed, continuous base
required by the claim, we fail to perceive any teaching, suggestion or incentive in either
reference that would have led one of ordinary skill in the art to substitute laterally-directed
surfaces for the inwardly-oriented dimple, other than the hindsight afforded one who first
viewed the appellant’s disclosure. This, of course, is not a proper basis for a rejection.
See In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
The combined teachings of the two applied references thus fail to establish a prima
facie case of obviousness with regard to the subject matter of independent
claim 1, and we will not sustain the rejection of claim 1 or, it follows, of claims 2-8, which
depend therefrom.
Independent claims 9 and 14 set forth the invention in somewhat different terms, but
also contain the limitations discussed above. For the same reasons as were set forth with
regard to claim 1, the rejection of claims 9 and 14, and dependent claims 10-13, 15 and
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