Appeal No. 2003-1778 Page 9
Application No. 08/988,292
136, 138-39 (Fed. Cir. 1986). Consequently, we will sustain the
examiner’s § 102(b) rejections.
Rejection under 35 U.S.C. § 103(a)
With regard to the examiner’s § 103(a) rejection of
dependent claim 12 over Lerner taken together with Gerstel, the
examiner asserts that (answer, page 4):
it would have been obvious to one of ordinary skill in
the art at the time the invention was made to use
Gerstel’s protrusion configuration into Lerner’s
protrusions. Doing so would have improved the
protrusion with the addition of cutting edges, and
their piercing effect.
However, we note that Lerner is concerned with an applicator
for applying liquid to hair and Gerstel provides for a drug
delivering device. Against that background, the examiner has not
reasonably established why one of ordinary skill in the art would
look to Gerstel for a modification of the hair treatment
applicator of Lerner.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellants’ disclosure as a blueprint to reconstruct the claimed
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