Appeal No. 2000-0608 Page 4
Application No. 08/799,499
to be ornamental “in that it covers the aesthetically unappealing wire frame and also could
be considered to be in the form of an ornamental object such as a candle” (page 3). The
appellant argues in rebuttal that the examiner’s rejection is defective in that no prior art
citing such a simulated figure has been cited, and that “[t]his approach reduces an
obviousness determination to the subjective opinion of the Examiner” (Brief, page 3).
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, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, 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). To this end, the requisite 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, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The appellant has explained that plant covers remain on a lawn for long periods of
time, and her invention provides them with a pleasing decorative appearance that
enhances the lawn in the course of protecting the plants (see specification, pages 4 and
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