Appeal No. 1999-1542
Application No. 08/806,864
a marginal offset and does not shorten their length. Chhabra
does show the side rails 12
and 14 being of shorter length than the edges of the sides of
the slider 10 (Figure 2). However, Chhabra does not show a
U-shaped rail construction. Further, there is no suggestion
that the side rails would be of different length as recited in
claim 21. The Federal Circuit states, “[the] mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.” In re
Fritch, 972 F.2d 1260, 1266 n.4, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992)(citing In re Gordon, 773 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)). “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1087, 37 USPQ2d at 1239 (Fed. Cir.
1995) (citing W. L. Gore & Assocs., v. Garlock, Inc., 721 F.2d
at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983)).
We find that to come up with the recited structure of claim
21 by picking and choosing various parts of Chhabara and Le Van
to modify Yoneoka by these miscellaneous parts is simply to use
8
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