Appeal No. 2002-0573
Application 09/150,422
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious. Moreover, and more to the point
in the present appeal, we observe that the mere fact that some
prior art references may be modified in the manner suggested by
the examiner does not make such a modification obvious unless the
prior art suggested the desirability of the modification. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir
1984). Here, the prior art relied upon by the examiner contains
no such suggestion, particularly with regard to the examiner’s
asserted combination of Ballard and MacDonald.
In contrast to the examiner’s position concerning the
teachings of MacDonald (answer, page 5), we note that this
reference does not teach or suggest a reducing coupling having an
upper end mounted on the bottom end of a drop nipple “in abutting
relationship” and with the outer surface of the reducing coupling
and outer surface of the drop nipple in alignment with each other
to form a smooth outer surface of the same circumference to thus
form an integral drop nipple-coupling having the outside
appearance of an integral pipe, as set forth in claim 1 on
appeal. Nor does MacDonald teach or suggest the specific
structure of the reducing coupling set forth in claim 4 on
4
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