Appeal No. 2003-0306 Page 5
Application No. 08/967,043
pests. Movement of the cover layer to a location below the seed layer would render it
incapable of serving its intended protection function and, thus, would not have been
obvious to one of ordinary skill in the art.1 Moreover, as to the motivation alluded to by
the examiner, namely, to provide structural integrity to the vegetation element of Allen,
a base or backing layer 5 of fibrous material is already provided below the seed layer 6
of Allen for this purpose. From our perspective, the only suggestion for putting the
selected pieces from the references together in the manner proposed by the examiner
is found in the luxury of hindsight accorded one who first viewed the appellant’s
disclosure. This, of course, is not a proper basis for a rejection. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). It follows that we shall not
sustain the examiner’s rejection of claim 23, or claims 29, 30 and 37-40 which depend
from claim 23, as being unpatentable over Allen in view of Muldner.
The above-noted deficiency in the combination of Allen and Muldner finds no
cure in the additional teachings of Schmidt, Nestor, Lippoldt and Angruner. Thus, we
also shall not sustain the rejections of claim 25 as being unpatentable over Allen in view
of Muldner and Schmidt, claim 26 as being unpatentable over Allen in view of Muldner,
Schmidt and Nestor, claim 27 as being unpatentable over Allen in view of Muldner,
1 Where 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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