Appeal No. 2003-0223 Page 4
Application No. 09/777,647
accordance with the teachings of each of the reference patents to meet the terms of
claim 5, nor does he set forth the reasons why one of ordinary skill in the art would have
been motivated to make such modifications. The examiner merely makes the
unsubstantiated conclusionary statement that “the feature of threadingly attaching a
circular horizontal flange to an attachment bushing, thereby creating a two-piece drain
assembly, is well known in the art” (Paper No. 7, page 3). The examiner provides an
indication of suggestion to combine references only with regard to Mowery, but in this
regard he erroneously opines that Mowery provides a circular horizontal flange
threaded into a drain assembly “to allow easy replacement of the flange in the event the
flange becomes tarnished” (Paper No. 7, page 3) when, in fact, no such suggestion
appears in Mowery, who teaches covering the flange with a replaceable decorative cap
52 to hide such tarnish (see column 1, line 67 et seq., column 4, lines 22-32, and
column 5, lines 4-12). Thus, to the extent that Mowery suggests a solution to the
tarnish problem, it is replacing the drain cap and not the circular flange.
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. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The examiner
has neither provided an explanation of how the device of the admitted prior art would be
modified to meet the terms of claim 5 nor set forth the suggestion provided by the prior
art for doing so, even though the appellant challenged him in this regard in the Brief
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