Appeal No. 2005-1238 Page 10
Application No. 09/874,031
In the rejection of independent claims 11, 19 and 22 before us in this appeal
(final rejection, p. 2), the examiner (1) set forth an accurate assessment as to the
teachings of Turner; (2) set forth an inaccurate assessment as to the teachings of
McElroy;2 (3) ascertained3 that Turner does not teach the claimed elastomeric cover;
and (4) concluded that:
It would have been obvious to one of ordinary skill in the art to modify the
teachings [of Turner] at the time of the invention with the teachings of an
elastomeric cover to accommodate different size container/vases as taught by
McElroy (McElroy Col. 2 line 14-21, Col. 1 line 11, and CoI.8 line 40) since the
modification is merely the selection of a known alternate equivalent cover means.
The appellant argues in the brief that there is no teaching, suggestion or
motivation in the applied prior art (i.e, Turner, McElroy and Saks) for a person of
ordinary skill in the art, at the time the invention was made, to have modified Turner to
arrive at the subject matter of independent claims 11, 19 and 22. We agree. In that
regard, it is our view that the teachings of McElroy would not have provided an artisan
with any reason to have modified Turner's cover to be an elastic cover as set forth in
independent claims 11, 19 and 22. As in the previous appeal, the mere fact that the
2 The examiner stated (final rejection, p. 2) that "McElroy teaches a floral arrangement cover for a
vase." McElroy does not teach or suggest that his lid is a floral arrangement cover for a vase.
3 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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