Appeal No. 2003-0693
Application No. 09/006,248
arm 16 of Blatt ‘276. Thus, we do not view Kraus as teaching or
suggesting the use of an extendable arm in Blatt ‘276. Moreover,
given the disparate natures of the devices of Blatt ‘276 (a
relatively heavy duty transfer beam) and Dailey (a support for
holding a fish hook for fly tying), we do not see any basis for
providing a ball joint in Blatt ‘276 for mounting the pneumatically
operated gripper thereof to the arm 16 aside from the luxury of
hindsight accorded one who first viewed the appellants’ disclosure.
This, of course, is not a proper basis for a rejection. See In re
Fritch, 972 F.2d at 1266, 23 USPQ2d at 1784.
The mere fact that the prior art could be modified does not
make such a modification obvious absent suggestion of the
desirability of doing so. See, for example, In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
case, we fail to perceive any suggestion of the desirability, and
thus the obviousness, of modifying Blatt ‘276 in the manner
proposed by the examiner. In this regard, the examiner’s
contention that extendable arm structures and ball joints are
conventional in the art and could be provided in Blatt ‘276 does
not suffice.
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