Appeal No. 2004-0658 Page 11
Application No. 09/419,579
of Sullivan would have made it obvious at the time the invention was made to a person
of ordinary skill in the art to have replaced Cameron's horn unit 154 within the staff with
a compressed gas horn unit within the staff since the prior art teaches these two types
of horn units are known alternatives. In this regard, it must be borne in mind that where
two known alternatives are interchangeable for their desired function, an express
suggestion of the desirability of the substitution of one for the other is not needed to
render such substitution obvious. See In re Fout, 675 F.2d 297, 301, 213 USPQ 532,
536 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568, 152 USPQ 618, 619 (CCPA
1967).
For the reasons set forth above, the decision of the examiner to reject claims 2,
3, 7 and 8 under 35 U.S.C. § 103 is affirmed.
Claims 4, 5 and 9 to 13
With regard to claims 4, 5 and 9 to 13, we find ourselves in agreement with the
appellants (brief, pp. 3-5) that the subject matter of these claims is not suggested by the
combined teachings of the applied prior art. Specifically, there is no teaching,
suggestion or motivation in the applied prior art to have modified Cameron's warning
sign to have a compressed gas signaling device disposed within the manually
graspable portion of the staff to include either (1) activation means manually accessible
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