Appeal No. 2001-0290 Page 7
Application No. 09/084,871
especially in light of the apparent complexity of the brake
caliper rails and slots as compared with the forged components
of Mitchell and Afanador and in the absence of any evidence
that it was known in the art to forge the type of brake
caliper rails disclosed by Afanador. Even assuming that the
examiner is correct that the additional step of forging brake
caliper rails would have been well within the level of skill
of one in the art at the time of appellants’ invention, 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).
For the foregoing reasons, we have determined that the
applied references are not sufficient to have suggested the
subject matter of claim 1. From our perspective, the only
suggestion for putting the selected pieces from the references
together in the manner proposed by the examiner is found in
the luxury of hindsight accorded one who first viewed the
appellants' disclosure. This, of course, is not a proper
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