Appeal No. 2003-0104 Page 9
Application No. 09/659,792
Cir. 1991) (citations omitted). That is, something in the prior art as a whole must
suggest the desirability, and thus the obviousness, of making the combination. See In
re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221
USPQ 481, 488 (Fed. Cir. 1984).
In the rejection under 35 U.S.C. § 103, the examiner determined (final rejection,
p. 4) that based on Hussain's teaching of hole 7 in the bottom of an insulated can
holder it would have been obvious to one having ordinary skill in the art at the time the
invention was made to provide the bottom of Pulli's insulated container with an airflow
passageway in order to facilitate removal of the keg from the insulated container.
The appellant's argue (brief, pp. 5-6; reply brief, p. 2) that there is no motivation
for modifying Pulli's insulated container by the teachings of Hussain since Pulli's
insulated container does not provide a tight fit to the keg since the container is designed
to retain ice and water. We agree. Without a tight fit between a keg and Pulli's
insulated container there is no need for a hole to be provided in the bottom of Pulli's
insulated container in order to facilitate removal of a keg from the insulated container.
In our view, the only suggestion for modifying Pulli in the manner proposed by the
examiner stems from hindsight knowledge derived from the appellant's own disclosure.
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