Appeal No. 2001-1486
Application No. 09/137,218
relative to the machine and as projecting beyond a vertical plane
of the machine. The examiner considers, among other things, that
Reid discloses a stand for roll (40) that extends outwardly of the
roll and wherein “[i]t appears that the stand is attached by some
bolt means which are easily removable/adjustable.” (Paper No. 16,
page 3). Based on these findings, the examiner considers that it
would have been obvious to provide the frame (22) of Johnson with
removable feet that extend beyond the vertical footprint of the
dunnage producing mechanism and thus arrive at the claimed subject
matter. For the reasons that follow, we do not agree.
While it may be true that the Johnson could be modified as
proposed by the examiner, the examiner has supplied no evidence
that the prior art suggests the desirability, and thus the
obviousness, of such doing so. 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) (“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.”). In our view, the only suggestion for modifying
Johnson in the manner proposed to meet the limitations of claims
135 and 147 stems from impermissible hindsight knowledge derived
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