Appeal No. 2002-0342 Page 3
Application No. 09/295,399
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 15) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 14) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claim 1, the sole independent claim before us on appeal, stands rejected as
being obvious2 in view of the combined teachings of the British specification and the
German patent. It is the examiner’s view that the British reference discloses all of the
subject matter recited in claim 1, but “does not disclose driving bands formed of a soft
iron and a driving band comprising a copper partial driving band located at the front end
2The 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).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007