Appeal No. 2004-0160
Application No. 09/939,993
doubt on the examiner’s position that DE ‘484 is susceptible to the
same outlet blockage and back pressure problem as Caruso.
The mere fact that the prior art could be modified does not
make such a modification obvious absent suggestion of the
desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Moreover, 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. Id. In the present case, we fail to
perceive any clear teaching, suggestion or incentive in the
combined teachings of DE ‘484 and Caruso that would have led one of
ordinary skill in the art to modify the heater device of DE ‘484 in
the manner proposed by the examiner. It appears to us that the
only suggestion for doing so is found in the hindsight accorded one
who first viewed appellant’s disclosure. This, of course, is not a
proper basis for a rejection under 35 U.S.C. § 103. See In re
Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
In light of the foregoing, we cannot sustain the standing
rejection of claims 1-3, 5-7, 13 and 15 as being unpatentable over
DE ‘484 in view of Caruso.
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