Appeal No. 2002-1972 Page 6
Application No. 09/394,722
This rejection is not sustained on the basis of the same reasoning set forth
above with regard to the Section 101 rejection. That is, the examiner has not, in our
opinion, adduced evidence or provided persuasive explanation that one of ordinary skill
in the art would not be enabled by the specification to perceive a tangible result from
the use of the invention and/or would have been caused to conduct an undue amount
of experimentation in order to do so.
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).
The first of the rejections under Section 103 is that claims 1 and 3-5 are
unpatentable over Philippe. This design patent discloses an earring which has a three-
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