Appeal No. 2000-0713
Application 08/864,726
both planar and non-planar shapes, the examiner has not
identified, nor do we find, any teaching of a preform having
both opposing convex curved surfaces and a perimeter with
concave shape edges as required by claim 16. Therefore, the
rejection under 35 U.S.C. § 102(b) is reversed.
Claims 16-20 were rejected, in the alternative, under 35
U.S.C. § 103 as obvious over Prud'Homme. The initial burden
of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). In determining whether an invention is
obvious, the examiner must consider (1) the scope and content
of the prior art; (2) the differences between the prior art
and the claimed invention; (3) the level of ordinary skill in
the art; (4) any objective considerations that may be present.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
466-67 (1966). ?The question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time
the invention was made." In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976). Even where a single prior art
reference is relied upon show obviousness, there must be a
showing of a suggestion or motivation to modify the teaching
of that reference to achieve the claimed invention. In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000). The suggestion or motivation to modify a reference may
be implicit from the prior art as a whole rather than
expressly stated. Id. However, regardless of whether the
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007