Appeal No. 2003-0400 Page 6
Application No. 09/272,772
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). For the above
reasons, we fail to perceive any teaching, suggestion or incentive in either reference
which would have led one of ordinary skill in the art to modify the Schmidt braking
system in the manner proposed by the examiner. It appears to us that suggestion for
doing so is found only in the hindsight afforded one who first viewed the appellants’
disclosure. This, of course, is not a proper basis for a rejection under Section 103. In
re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). Thus,
applying the guidance of our reviewing court to the situation at hand leads us to
conclude that the teachings of the applied references fail to establish a prima facie case
of obviousness with regard to the subject matter recited in independent claim 1, and we
therefore will not sustain the rejection of claim 1 or, it follows, of claims 2-14, 16-18 and
21-23, which depend therefrom.
CONCLUSION
The rejection is not sustained.
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