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Ex parte DECKER - Page 5
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Board of Patent Appeals and Interferences > 1997 > Ex parte DECKER - Page 5
Appeal No. 96-1820
Application No. 08/189,140
The claims in this case stand rejected as being obvious
under 35 U.S.C. § 103. Our reviewing court has provided us with
the following guidance for evaluating a rejection made under
Section 103, which we have applied in arriving at our decision:
The test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 USC §103, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been led
to modify a prior art reference or to combine reference teachings
to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). This motivation must stem
from some teaching, suggestion or inference in the prior art as a
whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
We first reflect upon the fact that the appellant considers
it critical that the practice baseball provide the “feel” and the
“dynamic characteristics” of a regulation baseball
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Last modified: November 3, 2007
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