Appeal No. 2001-2382 Page 8
Application No. 09/376,461
there would seem to be no need for the points of joinder between the various
components of the device be leak-proof, much less seamless.
The examiner concludes, on the basis of Streiter’s disclosure, that it would have
been obvious to one of ordinary skill in the art to further modify the DeBlock flashing,
now made of seamless plastics material by virtue of the teachings of Hoy, by making it
of metal. The appellant challenges this conclusion, arguing that no evidence has been
provided that seamless metal flashings were known in the art or that there was a
reasonable expectation of success that metal flashings could be made in such a
manner (Brief, pages 4 and 5). We also note that the presence of seams in the prior art
flashings was pointed out by the appellant on page 2 of the specification as giving rise
to problems that are solved by the present invention. The examiner’s response was
that forming metal by the process of stamping was a well known technique in the prior
art, and that there was no need for evidence to be provided on this point because the
manner of achieving seamless construction was not recited in the claim.
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Considering that
Streiter does not disclose or teach a flashing-type structure that is of seamless metal
construction, we cannot agree with the examiner that it would have been obvious to
make the DeBlock flashing of seamless metal construction, particularly in the light of
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