Appeal No. 1998-2356
Application 08/373,860
second paragraph. Accordingly, we find that it is not possible to apply the prior art relied upon by the
examiner to these claims in deciding the question of obviousness under 35 U.S.C.
§ 103 without resorting to considerable speculation and conjecture as to the meaning of the questioned
limitations in the claims. This being the case, we are therefore constrained to reverse the examiner's
rejections of claims 1 through 19 under 35 U.S.C. § 103 in light of the holding in In re Steele, 305 F.2d
858, 134 USPQ 292 (CCPA 1962). We hasten to add that this reversal of the examiner's rejections is
not based on the merits of the rejections, but only on technical grounds relating to the indefiniteness of
the appealed claims . 3
In summary, all of the examiner's rejections of the appealed claims under 35 U.S.C. § 103 have
3As mere guidance to the examiner and appellant, we note that appellant’s arguments in the
brief (pages 4-7) regarding the combination of Goddard and Stockton appear to be unpersuasive. In
the first place, we note that the recitation in independent claim 1 of a light source “having a power up to
about 6,500 watts” has no lower limit and thus would read on any light source of less than 6,500 watts,
e.g., as in Goddard, which appellant appears to concede is “only about 250 watts (max.)” (brief, page
4). As for the argument that Goddard lacks any teaching of appellant’s “effective field of illumination”
(brief, page 5), we note that claim 1 on appeal does not specify any effective field of illumination.
Regarding appellant’s argument on page 7 of the brief concerning suggestion to combine and hindsight,
we note that it appear to us that it would have been obvious to one of ordinary skill in the art, based on
the teachings of Stockton, to provide the balloon in Goddard with a protective and decorative cover
like that seen at (12) in Stockton, thereby protecting the balloon of Goddard and providing the lamp of
Goddard with the appearance of a conventional hot air balloon. Appellant has in no way disputed this
suggestion or motivation found in Stockton for modifying the lighted balloon of Goddard. On the other
hand, the examiner has not accounted for the “pole” recited in claim 1 as being attached to the rod, nor
for the telescopic mast set forth in claim 9 on appeal.
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