Appeal No. 2002-2062 Page 7
Application No. 09/207,631
molding suggested by Degler (answer, page 5). Those statements
by the examiner regarding the teachings of Degler leave out other
teachings of Degler concerning how such a filled bag should be
molded to form a prosthetic device. On this record, the examiner
has not made clear from the overall teachings of the applied
references teachings why one of ordinary skill in the art would
have been led by the particular and disparate disclosures of
Degler and Brogan to modify the significantly different method of
Tourniaire so as to arrive at the herein claimed subject matter.
In this context, the examiner’s rejection falls short in
speculating about motivation rather than identifying a persuasive
and particularized suggestion, reason or motivation founded in
the applied references, in the nature of the problem to be solved
and/or in evidence establishing the skill in the art, a
suggestion that is sufficiently compelling to predicate a
combination of the references thereon in a manner so as to arrive
at the claimed invention. See In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998).
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