Appeal No. 2004-1666 Page 6
Application No. 09/586,912
As for the insecticides named in the claim, the fact that they are among those
that were known in the art at the time of the appellants’ invention would not, in our
opinion, in and of itself have suggested to one of ordinary skill in the art that these
particular ones be placed in a foamed sealing material used to close the opening in the
base of an above ground electrical housing through which conduits extend.
The mere fact that the prior art could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984). In the present case, we fail to
perceive any teaching, suggestion or incentive in any of the references which would
have led one of ordinary skill in the art to replace the filler material of Grannis with a
material manufactured in accordance with the teachings of Isgur, and to add thereto the
particular insecticides recited in the claim. We first note, in this regard, that Grannis
teaches that the filler material be brittle so that it can be “broken” if necessary to be
removed and, no doubt, so that the rodents and small animals about which Grannis is
concerned cannot penetrate it with their teeth and claws. Thus, from our perspective,
one of ordinary skill in the art would not have been motivated to remove the brittle seal
and replace it with a flexible one, as the examiner has proposed, for to do so would
provide a seal that would appear to be incapable of performing the task of preventing
the entry of rodents and small animals, which is an object of the Grannis invention.
Second, there is no recognition in either reference of the problem of insects gaining
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