Appeal No. 2004-1334
Application 09/526,457
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellant submits two arguments. First, appellant contends that “Mallow does not
disclose a gel which protects the conduit 20, which extends from the outside to the inside of wall
15, as shown in Figs 1 and 2 of Mallow” (brief, page 6). Appellant points out that space 25 of
Fortune is filled with a fire resistant foam, while in Mallow, conduit 20 passes through wall 15
and is surround by gel 21 within envelope 13 (id., pages 6-7). Appellant argues that Mallow
discloses “only that the gel will prevent the passage of heat and fire from one side of the wall to
the other,” pointing to FIGs. 1 and 2 as showing “before” and “after” a fire, contending that
“[a]s clearly shown in Fig. 2, the gel of Mallow has not protected the conduit 20, since the right
side of the conduit has melted and will no longer perform” its function (id., pages 7-8).
Secondly, appellant contends that “there is no motivation to combine Fortune and Mallow”
(brief, page 6). Appellant points out that in the room of Fortune, the electrical service structure
does not extend from one side of the wall to the other, that is, through the wall, and the gel of
Mallow protects the inside of a room from a fire outside the room, and thus, “[t]here is no
teaching in Mallow that the gel 21 will protect the wires of Fortune, only that it will block the
passage between the walls” (id., pages 8-9). With respect to appealed claims 8 and 9, appellant
submits that the cited references do not disclose the use of additional layers as required in these
claims (brief, page 10).
The examiner responds that it is clear from Mallow that the fire protective gel stopped
the fire from burning through the wall, and that the gel would function in this manner in
environments other than that shown in Mallow FIG. 2. With respect to appealed claims 8 and 9,
the examiner maintains his position with respect to duplication of materials (answer, pages 3-4).
We find that one of ordinary skill in this art would have reasonably inferred from the
disclosed in Fortune of walls of “fiber glass reinforced plastic, which provides an extremely
strong rigid, fire resistant shell with good wear resistant properties” and the use of “structural
fire resistant, sound absorbent foam” in the space between the walls used for “routing all of the
electrical . . . services” (col. 3, lines 34-35 and 63-66), that the modular housing unit disclosed
therein was intended to provide fire protection to occupants as well as the components of the
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