Appeal No. 2004-1293
Application No. 09/989,330
the plants are prevented from spreading or crowding the neck
portion of the aquarium because the top of the plant-holder is
above the neck of the aquarium. (Emphasis added; lines 40-51.)
Given the particular requirements of the configuration and
positioning of Gillinder’s plant-holder, we share the
appellant’s view that one of ordinary skill in the art would not
have been led to modify Gillinder’s aquarium in the manner as
proposed by the examiner. It is our judgment, therefore, that
the examiner has not established a prima facie case of
obviousness against appealed claims 1 through 11, 14 through 16,
18 through 27, and 30 through 32.
The examiner argues that Satterlee provides evidence of
obviousness. (Answer, page 6.) We note, however, that
Satterlee was not included in the statement of the rejection.3
Moreover, Satterlee relates to a water garden, not to an
aquarium in which the object is to provide a plant holder that
permits fish to swim freely from top to bottom and vice versa
and prevents or reduces the possibility of the plant restricting
the neck portion of the aquarium, as specifically described in
Gillinder.
3 In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970)(“Where a reference is relied on to support a
rejection, whether or not in a ‘minor capacity,’ there would
7
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