Appeal No. 2004-1159
Application 10/108,315
As for independent claim 21, which is directed to a roll of
paper towels having, inter alia, “a width of 12.7 to 15.24
centimeters (5 to 6 inches),” suffice it to say that the
examiner’s above-noted position represents a clear case of
hindsight reconstruction, since the applied patent to Monahan
provides no teaching or suggestion whatsoever of modifying the
paper towel rack therein to be of any size other than that
necessary to accommodate a conventional roll of paper towels
(see, col. 3, lines 28-37 of Monahan). In that regard, we
observe that the mere fact that the prior art could be modified
in the manner urged by the examiner would not have made such
modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 773 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992).
In this case, it is our opinion that the examiner has
impermissibly drawn from appellant’s own teaching in concluding,
without any factual basis in the applied prior art, that it would
have been obvious to one of ordinary skill in the art to have
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007