Appeal No. 2005-1238 Page 11
Application No. 09/874,031
prior art could be modified in the manner suggested by the examiner does not make
such a modification obvious unless the applied 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 this case, the applied prior art does not suggest the desirability of the
modification. Additionally, it appears to us that making Turner's cover 10 to be an
elastic cover stretched over the pot 16 would effectively destroy the purpose of Turner's
cover which is to hold the bedding material, and thus the potting soil, in place. To
perform that function, the cover must depend downwardly inside the pot to engage the
upper surface of the bedding material which is located below the open top end of the
pot. If Turner's cover 10 were modified to be an elastic cover stretched over the pot 16,
it would not be able to then depend downwardly inside the pot to engage the upper
surface of the bedding material to hold the bedding material, and thus the potting soil, in
place.
For the reasons set forth above, the decision of the examiner to reject
independent claims 11, 19 and 22, and claims 5, 7 to 10, 12 to 18, 20 and 21 dependent
thereon, under 35 U.S.C. § 103 is reversed.
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