Appeal No. 1998-1357
Application No. 08/348,744
standards intended to be met (answer, page 5).
Essentially, it is the examiner's position that one of
ordinary skill in the art would have found it prima facie
obvious to modify the cryogenic liquid storage tank of
Johnston to meet the claimed fire wall rating, without
evidence or prior art in support thereof. In the absence of
evidence or compelling argument in support thereof, however,
we are not persuaded that this would have been 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). Like the
appellants, we see no teaching or suggestion in Johnston, of
insulation filling a space of sufficient thickness, between
the inner tank and outer shell, to enable the tank to meet a
two hour fire wall rating and no rationale by the examiner as
to exactly why any such modification of Johnston would have
been necessary or desirable. Therefore, we will not sustain
the examiner's rejection of claims 118 and 132 under 35 U.S.C.
§ 103(a) as being unpatentable over Johnston.
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