Appeal No. 2004-2279 Page 8
Application No. 10/151,263
The appellants argue that the there is no motivation in the applied prior art for
one skilled in the art to have modified Ammons to arrive at the claimed subject matter.
We agree.
In our view, the underwater structures of Haney and Gomez De Rosas fail to
provide the necessary motivation or suggestion that would have led an artisan to have
modified Ammons' above-ground wind turbine tower so as to arrive at the claimed
invention. In that regard, there is no evidence in the applied prior art that Ammons' guy
lines 53 and rigid stiff leg or strut 48 are insufficient to restrain mainmast 27 in place
against the external forces incurred by the mainmast 27 or the windmill 150 supported
by the mainmast 27. The mere fact that the prior art could be modified in the manner
suggested by the examiner does not make such a modification obvious unless the prior
art suggested the desirability of the modification. See In re Gordon, 773 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
In our view, the only suggestion for modifying Ammons in the manner proposed
by the examiner to meet the above-noted limitations stems from hindsight knowledge
derived from the appellants' own disclosure. The use of such hindsight knowledge to
support an obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible.
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