Appeal No. 2001-1453 Page 5
Application No. 08/990,945
Among the arguments presented by the appellant in opposition to the examiner’s
position that Brown discloses all of the subject matter recited in claim 1 is that the
reference fails to disclose that the foam is of the open-cell type, as is required by the
claim, and therefore it cannot anticipate the subject matter of the claim. We agree, and
thus we will not sustain the Section 102 rejection of independent claim 1 or, it follows, of
claim 2, which depends therefrom.
The Rejections Under Section 103
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).
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