Appeal No. 2001-1372 Page 15
Application No. 08/018,841
the barrel so as to tightly engage and seal against the bore to minimize blowby of
propulsion pressure generated behind the projectile and to engage the rifling in the bore
so as to achieve the spinning effect for which rifles are known. Therefore, it is our
opinion that the subject matter of claims 17 and 18 would have been obvious to one of
ordinary skill in the art from the teachings of Davis.
We shall not, however, sustain the rejection of claim 19 as being unpatentable
over Davis. Quite simply, we find no teaching or suggestion in Davis to cold work the
projectile so as to achieve the more than ten-fold increase in yield strength as called for
in the claim and the examiner has not explained why this would have been obvious.10
CONCLUSION
To summarize, the decision of the examiner to reject claims 30, 31, 33, 34, 37-
39, 46-53 and 55-58 under 35 U.S.C. § 112, second paragraph, is affirmed. The
examiner’s decision to reject claims 15-19, 30, 31, 33, 34, 37-39 and 51-53 under 35
U.S.C. § 102 is reversed as to claims 17-19, 30, 31, 33, 34, 37-39 and 51-53 and
affirmed as to claims 15 and 16. The examiner’s decision to reject claims 15-19, 30,
10 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, e.g., 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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