Appeal No. 2004–0182 Page 3
Application No. 09/933,354
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellants’ invention is directed to methods of manufacturing structural
tubes adapted to telescopingly engage one another, for use in items such as vehicle
jacks. Each of the four independent claims before us on appeal requires, inter alia, the
steps of rollforming a roll of sheet material into a “tubular shape,” and forming a
longitudinal “channel” in the tubular shape. In all of the rejections, the examiner has
found this structure to be present in the rollformed structural element disclosed by
Lickliter, and has combined Lickliter with Sturrus (claims 1, 7 and 9), Lawson (claim 18),
and Sturrus and Lawson (claims 19 and 20), in order to meet other limitations of the
claims. The appellants argue that the structural element disclosed by Lickliter is not a
“tubular shape” and does not include a “channel,” as is required by all of the claims
(Brief, page 12). We agree, and on this basis will not sustain any of the rejections.
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
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