Appeal No. 2006-0587
Application No. 10/017,483
invention is inadequate, by itself, to establish obviousness
for the modification. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992) and
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984).
Finally, we also reiterate the appellants’ correct
observation that “the modification suggested by the Examiner
would render the Keller device inoperable . . . because the motor
would be electrically coupled to the fuel cell stack whenever the
bus voltage was above the threshold voltage, thereby increasing
the supply of fuel and further increasing the bus voltage . . . ,
ultimately resulting in catastrophic runaway” (brief, pages 12-
13). In response, the examiner urges that his proposed
modification to Keller “would not result in such catastrophic
runaway of the system as argued by the applicants because if
serious, significant or a large number of unsatisfactory problems
were readily apparent, the prior art would have reported or
addressed them” (answer, page 9). However, such problems
certainly would not have been “reported or addressed” by the
prior art reference to Keller since it is the examiner, not
Keller, who has suggested the modification which would have
resulted in a catastrophic runaway problem.
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