Appeal No. 1999-0737
Application 08/655,176
Looking first to the examiner’s prior art rejection of claims 1-6, 8-11, 14, 16, 17, 21, 23-25
and 27 under 35 U.S.C. § 103 as being obvious in view of the combined teachings of Stamper, Spirg,
Takahara and appellants’ admitted prior art, we must agree with appellants’ position that the applied
prior art is not properly combinable in the manner urged by the
examiner. According to the examiner in his answer (page 7, lines 9-12), since the indicators of Spirg,
Takahara, Wahl and others would function as desired without any “surprising” or “unexpected” results
when combined with a roofing sheet like the one taught by Stamper, it therefore would have been
obvious to one of ordinary skill in the art to combine these teachings. We believe this standard to be in
error and improper.
In our opinion, the only possible reason that one of ordinary skill in the art would have
considered the combination as posited by the examiner is based on hindsight derived from appellants’
own disclosure and not from any teachings or suggestions found in the admitted prior art and applied
references themselves. Like appellants (brief, pages 14 and 15), absent the disclosure of the present
application, we do not consider that one of ordinary skill in the art would have been motivated to
modify the roofing membrane of the admitted prior art and Stamper, with temperature indicators like
the ones disclosed by Spirg and Takahara in the manner required to arrive at the membrane roofing
assembly defined in appellants’ claims on appeal. Stamper teaches a roofing membrane with a thin
epoxy resin coating. The focus of the patent appears to be colorization of the roofing membrane to
some color other than black. Stamper does not discuss or explain the installation procedures nor does
it address any installation difficulties which would have motivated one of ordinary skill in the art to look
towards combining this teaching with a heat seal indicator. Spirg teaches a self-adhesive type heat
indicator which appears to be applicable to single site temperature monitoring. The reference does not
stipulate any specific application and thus is silent as to any roofing application. It appears, for
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