Page 5
Appeal No. 2004-1298
Application No. 09/875,074
Obviousness cannot be established by combining the teachings of the prior art to
produce the claimed invention absent some teaching or suggestion in the prior art
supporting the combination. In re Fritch, 972 F.2d 1260,1266, 23 USPQ2d 1780, 1783-
84 (Fed. Cir. 1992). The mere fact that the prior art may be modified in the manner
proposed by an examiner would not make the modification obvious unless the prior art
suggested the desirability of the modification. Id.
In the present case, the collective teachings of Coulton ‘521 and Brodeur contain
no indication that it would be desirable or in any way advantageous to provide the
Coulton vent with the capability of allowing moisture and water to flow on both sides of
its web as urged by the examiner. To the contrary, Coulton expressly describes the
vent as promoting the circulation of air within a roof structure while preventing, via
screening material 9, the passage of water therethrough. This stated objective
completely belies the examiner’s rationale for combining the two references. Simply
put, the only suggestion for selectively combining the disparate teachings of a reference
(Coulton ‘521) drawn to a roof vent designed to prevent the passage of water
therethrough and a reference (Brodeur) directed to an earth drain for facilitating the
drainage of water from relatively impermeable types of soil stems from hindsight
knowledge impermissibly derived from the appellant’s disclosure.
Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
independent claims 1, 7 and 20, and dependent claims 2, 8, 14, 15, 17, 21 and 22, as
being unpatentable over Coulton ‘521 in view of Brodeur.
As neither Rothberg nor the admitted prior art cures the above noted
shortcomings of the Coulton ‘521 and Brodeur combination relative to the subject
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