Appeal No. 98-1022
Application 08/380,796
square inches in area”, as called for in each of the
independent claims on appeal. The mere fact that the prior
art could be so modified would not have made the modification
obvious unless the prior art suggested the desirability of the
modification (see In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984)). The examiner points to nothing
in the prior art, and we are aware of nothing, that contains
such a suggestion.
As to the examiner’s theory that the shape and size of
the claimed invention is nothing more than a matter of design
choice, we observe that an objective of appellants’ invention
is to provide a low volume tank having flat walls so that it
will not take up a lot of room in the limited amount of space
available in
a small boat or RV (specification, paragraph spanning pages 1
and
2). To that end, appellants’ specification (page 8) states:
The vacuum tank 14 according to the present
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