Appeal No. 2004-2193 Page 6
Application No. 09/737,781
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). Even considering,
arguendo, Kobayashi to be analogous art, we fail to perceive any teaching, suggestion
or incentive which would have led one of ordinary skill in the art to modify the Busboom
apparatus in the manner proposed by the examiner. In this regard, we first point out
that one of the features of the Busboom invention is locating the radiator on top of the
engine, and to modify this system so that the air intake is oriented downwardly would
necessitate a wholesale reconstruction of the machine, which in and of itself we
consider to be a disincentive to the artisan to do so. In addition, the only teaching for
orienting an air intake downwardly is found in Kobayashi, and it is for the purpose of
utilizing gravity to prevent the passage of water into the engine air intake in an
environment where water spray and condensation are present. Such a situation is not
normally present in the environment in which the Busboom apparatus is operated, and it
therefore is our view that the artisan would not have been motivated by Kobayashi to
relocate the Busboom air intake in such a manner as to meet the terms of the claim.
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