Appeal No. 2003-1649 Page 6
Application No. 09/523,469
rails with a fastener extending through the bottom surface without creating a protrusion
on the top surface of the side rails.
In the rejection of claims 1 and 21 (answer, p. 3), the examiner (1) stated that
"the shape of the side rails is not patentable because it does not produce an
unexpected result other than increased comfort, which is believed to be a well-known
and expected result;" and (2) concluded that it would have been obvious to one having
ordinary skill in the art at the time the invention was made to "have given the creeper
side rails, as taught by Happ, a tapered, tear shape, in order to increase comfort and
obstruction of a user."
The appellant argues that Happ does not suggest the claimed subject matter.
We agree. The examiner made a determination that the differences between the
subject matter of claims 1 and 21 and the subject matter taught by Happ would have
been obvious to an artisan, however, this determination has not been supported by any
evidence that would have led an artisan to arrive at the claimed invention. Evidence of
a suggestion, teaching, or motivation to modify a reference may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or, in some
cases, from the nature of the problem to be solved, see Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007