Appeal No. 2000-0608 Page 5
Application No. 08/799,499
6). In keeping with this, claim 10 recites that the cover simulates “an ornamental figure”
(emphasis added), and the disclosure provides examples in the form of a snowman, an
angel, and a Christmas tree, which are commensurate with the common definition of
1
“ornament” as being “something that lends grace or beauty.” In view of these factors, we
do not agree with the examiner that the cylindrical cover disclosed by Ball constitutes “an
ornamental figure” in the manner in which the claim requires, for in our view one of ordinary
skill in the art would consider it as possessing neither grace nor beauty. Nor can we agree
that it would have been obvious to replace the cylindrical cover with a decorative figure, on
the basis that the mere fact that the prior art structure could be modified does not make
2
such a modification obvious unless the prior art suggests the desirability of doing so, and
we fail to perceive any teaching, suggestion or incentive which would have led one of
ordinary skill in the art to do so. From our perspective, the rejection is grounded in the
hindsight afforded one who first viewed the appellant’s disclosure, which, of course, is not
3
a proper basis for a rejection under Section 103.
th
1See, for example, Merriam Webster’s Collegiate Dictionary, 10 Edition, 1996,
page 820.
2In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).
3In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
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