Appeal No. 2004-0623
Application 09/293,923
points of the cables on the winch drum in the initial position when the brakes are
disengaged, as is required by claim 12 when, in fact, the drawings show that clearly not
to be the case.
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). In the present
case, based upon the evidence adduced by the examiner, we fail to perceive any
teaching, suggestion or incentive which would have led one of ordinary skill in the art to
modify the Figure 3F embodiment of Bailieux in such a manner as to meet the terms of
claim 12. This being the case, it is our conclusion that the Bailieux fails to establish a
prima facie case of obviousness with respect to the subject matter disclosed in claim 12
or, it follows, of dependent claim 13, and we will not sustain this rejection.
Claims 1-6 and 11 stand rejected as being unpatentable over Bailieux in view of
Denman. In this rejection the examiner finds Bailieux’ Figure 3F to lack only the tapered
sides on the housing to guide the brake cables, and concludes that such a feature
would have been an obvious addition to the Bailieux system in view of the teachings of
Denman’s Figures 11 and 12 “to better guide the brake cables’ (Paper No. 15, page 6).
Be that as it may, claims 1-6 and 11 depend from claim 12, which the examiner rejected
as being unpatentable over Bailieux alone. We did not sustain the rejection of claim 12
because Bailieux fails to establish a prima facie case of obviousness with regard
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