Appeal No. 2003-0414 Page 10
Application No. 09/833,831
1885, 1888 (Fed. 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 our view, the only suggestion for modifying Cubbler's suspended ceiling
system to include measurement indicia stems from hindsight knowledge derived from
the appellants' own disclosure and not from the teachings of the applied prior art. On
page 7 of the answer, the examiner relied upon the common knowledge that cross
runners of ceiling grid systems often need to be cut to fit into the spaces around the
edges of a room to supply the motivation for combining the teachings of Blubaugh's
measurement indicia into Cubbler's suspended ceiling system. However, in the
rejection before us in this appeal, the examiner did not include such knowledge as part
of the evidence relied upon for establishing obviousness under 35 U.S.C. § 103.
Accordingly, we will not consider such evidence.
For the reasons set forth above, the applied prior art does not suggest the
claimed subject matter. Accordingly, the decision of the examiner to reject claims 1
and 3 to 6 under 35 U.S.C. § 103 is reversed.
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