Appeal No. 1998-2019 Page 8
Application No. 08/398,752
construction particularly desirable for use as an athletic field marker and would not have been
led to make the modification.6
For the foregoing reasons, we shall not sustain the examiner's rejection of claims 1-5
and 11-15 under 35 U.S.C. § 103 as being unpatentable over Shopbell in view of Graw.
REMAND TO THE EXAMINER
While we do not agree with the examiner that it would have been obvious, in view of
the combined teachings of Shopbell and Graw, to substitute bristle members for the post 1 of
Shopbell, as discussed above, we note that appellant’s claim 1, for example, does not require
bristle members. Therefore, pursuant to 37 CFR § 1.196(d), we remand the application to the
examiner to consider whether Shopbell anticipates any of appellant’s claims. In particular, with
regard to claim 1, the examiner should consider whether the post 1 of Shopbell’s marker is
“sufficiently flexible to be deflected during ground care operations . . . and be visible after such
ground care operations” and whether the soft rubber base 4 and plug 5 form an elastic body
which has a shape “sufficiently large to extend across the opening” of a receptacle and are
made of an elastomeric material “capable of being deformed to insert a portion of said body
through the opening and expanded to form a plug across the opening” as called for in claim 1.
6Where the proposed modification would render the prior art invention being modified unsatisfactory for its
intended purpose, the proposed modification would not have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan
Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
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