Appeal No. 2005-1298
Application No. 09/423,523
appellants argue that the applied references “are directed to
nonanalogous art areas.” Brief, pages 4-6.
With regard to whether the references are combinable, the
examiner argues that one of ordinary skill in the art would have
fully realized that the gas exchange sought by Tesch can be
achieved by the use of the gas permeable films taught by each of
the primary references, without the need for slitting the films.
Answer, page 4. The examiner also comments on the limitation
found in claim 4, regarding the film being impermeable to water
in liquid form. The examiner states that it is not seen that
this limitation distinguishes from the applied art because the
films of the primary references possess the characteristic of
being impermeable to liquid water. Answer, page 4.
We note that if a proposal for modifying the prior art in an
effort to attain the claimed invention causes the art to become
inoperable or destroys its intended function, then the requisite
motivation to make the modification would not have existed. See
In re Fritch, 972 F.2d 1260, 1265 n.12, 23 USPQ2d 1780, 1783
n.12 (Fed. Cir. 1992).
In the instant case, as pointed out by appellants on page 2
of the reply brief, Tesch teaches that permeability to water, in
liquid form, is an object of the invention of Tesch. See column
5, lines 49 through 51 of Tesch. See also column 2, lines 60,
through column 3, line 19, and column 6, lines 1-7. Here, Tesch
explains that in accordance with the present invention, the
disadvantages of the difficulty in supplying water to the ground
is minimized. Hence, modifying Tesch by employing the sheets of
either Flesher, Werenicz, or Warzelhan would destroy the
intended function of the sheet of Tesch (permeability to rain
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