Appeal No. 2004-0127 Page 6
Application No. 09/765,605
accomplished by the Dassler system, and we therefore fail to appreciate why one of
ordinary skill in the art would have been motivated to make this change.
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. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
case, we fail to perceive any teaching, suggestion or incentive which would have led
one of ordinary skill in the art to modify Dassler by replacing the sole of plastics material
with one of leather, and to replace the vent system with that of Ohashi. On this basis, it
is our conclusion that the combined teachings of the four references cited against claim
1 fail to establish a prima facie case of obviousness with regard to the subject matter
recited therein, and the rejection cannot be sustained.
This being the case, we will not sustain the rejection of claim 1 or, it follows, of
claims 3-8, which depend therefrom.
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