Appeal No. 95-4002
Application 08/081,858
The particular mounting orientation [of the tank] . . . would have been an
obvious matter of engineering design choice determined by the space
available in the particular vehicle. Attention is directed to Durrett, Jr. et.
al., fig. 3 which discloses a pocket orientation that is transverse to the
long axis of the tank. To have employed such teaching with a single
pocket would have been obvoius [sic, obvious] to one of ordinary skill in
the art in light of the cost savings to be realized. It is widely accepted in
the field to employ baffles that restrict the flow of fluids. These baffles are
placed across the path of the fluid flow. [answer, page 4]
We cannot accept this position. First, it is not clear that providing the Figure 3
embodiment of Durrett with only a single pocket would result in any significant cost
savings. Second, the examiner has not explained, and it is not clear to us, why the
skilled artisan would carry out such a modification of the Figure 3 embodiment in a way
that would necessarily result in the tank of claim 8. In this regard, Durrett’s Figure 1
embodiment is a “single pocket” tank of the type generally proposed by the examiner,
yet it is clearly does not correspond to that which is called for in claim 8. Also, when
only two modular containers of Durrett’s Figure 5 embodiment are employed, a “single
pocket” container results, however, it too clearly does not correspond to that which is
called for in claim 8. The mere fact that the prior art structure could be modified in a
manner which would result in the claimed subject 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 instance, we fail
to perceive any teaching, suggestion or incentive in Durrett which would have led one
of ordinary skill in the art to modify the fuel tank thereof in a manner which would result
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