Appeal No. 1999-0614 Page 9
Application No. 08/804,410
simulating a wooden plank fence by providing an appearance of
what is very well known for wooden fence planks in order to
improve the appearance of an existing chain link fence.
Accordingly, we agree with the appellant that it is
inappropriate in this case to dismiss these features as mere
matters of design choice.
We have reviewed the teachings of both Vise and Nugent
and we find therein no suggestion to modify the panels of Vise
so as to comprise the claimed features. While the shape and
surface grain of the Vise panels perhaps could have been
modified as proposed by the examiner, it is not apparent to us
why one of ordinary skill in the art would have been motivated
to make such a modification to these foraminous panels. 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
Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
While we acknowledge the examiner's reference (answer,
page 4) to the appellant's statement, on page 9 of the brief,
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