Appeal No. 2004-2007 Page 6
Application No. 10/014,838
device in the manner proposed by the examiner, for to do so would require a wholesale
reconstruction thereof, which in our view would destroy the invention for, at the very
least, it no longer would be able to accommodate the “standard bottles of different
sizes” for which it was conceived. In addition, Marcussen’s scale measures from the
top of the bottle along only that portion of the bottle where the cross-sectional area
changes, whereas Carr provides a scale that measures along the entire length of the
filled portion of the bottle, beginning at the bottom. From our perspective, suggestion
for making the modifications proposed to the Carr device is found only in the luxury of
the hindsight afforded one who first viewed the appellant’s disclosure which, of course,
is not a proper basis for a rejection under Section 103.4
It therefore is our opinion that the combined teachings of Carr and Marcussen
fail to establish a prima facie case of obviousness with regard to the subject matter
recited in independent claim 1, and we will not sustain the rejection of claim 1 or, it
follows, of claim 4, which depends therefrom.
Independent claim 5 contains the same limitations as claim 1, and thus the like
rejection of claim 5 also cannot be sustained, along with that of dependent claim 8.
The addition of Hornig to Carr and Marcussen in the rejection of dependent
claims 2 and 6, and of McDermott in the rejection of dependent claims 3 and 7, fail to
overcome the deficiency pointed out in combining Carr and Marcussen in the rejection
4In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
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