Appeal No. 1997-3121
Application 07/987,048
an electrically heated transparency. The examiner concludes that
it would have been obvious within the meaning of 35 U.S.C. § 103
to replace the temperature sensor of Marriott with an ambient
temperature sensor as taught by Jones or Heuser so that freezing
conditions may be determined [final rejection, page 2].
Appellants argue that the substitution of an ambient
temperature sensor in the Marriott device would render Marriott’s
device inoperable for its intended purpose [brief, pages 8-10;
reply brief, page 4]. We agree with the position argued by
appellants.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Since appellants are correct
that an ambient temperature sensor would serve no useful purpose
in the Marriott device, the only basis for the examiner’s
proposed modification of Marriott to have an ambient temperature
sensor is based on an improper attempt to reconstruct the
invention in hindsight.
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