Appeal No. 2004-1334
Application 09/526,457
unit.2 Accordingly, we determine that such teachings would have reasonably suggested to one of
ordinary skill in this art to improve upon such fire protection capacity as desired, including the
duplication of parts. See In re Harza, 274 F.2d 669, 671, 124 USPQ 378, 380 (CCPA 1960) (“It
is well settled that the mere duplication of parts has no patentable significance unless a new and
unexpected result is produced, and we are of the opinion that such is not the case here.”).
We agree with the examiner that Mallow would have reasonably disclosed to one of
ordinary skill in this art that after the envelope burns away, the gel, which has become hardened
by the heat of the fire, will provide fire protection (e.g., col. 5, lines 38-53, col. 6, lines 7-12 and
54-64). Indeed, contrary to appellant’s contentions, it would have been apparent to one of
ordinary skill in this art from a comparison of Mallow FIGs. 1 and 2, as explained at col. 6, lines
30-64, that the portion of the conduit that burned was in fact uncovered by the gel and envelope
barrier. We further find that Mallow would have taught the use of the gel barrier in walls that
have other fire barriers, such as rigid silicate foam 12 in Mallow FIGs. 1 and 2 (e.g., col. 4, lines
28-41). Thus, one of ordinary skill would have recognized from Mallow that a fire barrier foam
and fire barrier gel can be used together in the reasonable expectation of improving fire
protection.
Accordingly, we determine that the combined teachings of Fortune and Mallow would
have reasonably suggested to one of ordinary skill in this art to apply to the electrical service in
the foam filled space between the walls of Fortune a gel barrier as taught by Mallow in the
reasonable expectation of further protecting the electrical service from fire. Thus, with respect to
appealed claim 14, one of ordinary skill in this art routinely following the combined teachings of
the references would have reasonably arrived at the claimed invention encompassed by the
claim, including all of the elements thereof arranged as required, without recourse to the
disclosure in appellant’s specification. See In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531-32 (Fed. Cir. 1988) Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32 (“The
consistent criterion for determination of obviousness is whether the prior art would have
2 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
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