Appeal No. 2004-1520 Page 6
Application No. 09/957,058
reason or motivation is that expressed in Howard: To provide free movement, steering
ability, and stability to the golf bag in the upright position. The reason for using wheels
is evident from the express teachings of the prior art as well as from the nature of the
problem to be solved. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 73 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
Nor can we agree that the other teachings in the references with regard to other
structures such as the adjustable dolly of Berfield or the foldable mechanisms of Howard
somehow teach away from the use of wheels on a golf bag of the construction disclosed
by Yang or that the Examiner has failed to consider the prior art as a whole (Brief, pp.
10-12 and 13-14). Nor do we agree with Appellant that the Examiner is espousing a
combination in which the front wheels of Berfield and Howard are bodily incorporated
into the golf bag of Yang (Reply Brief, pp. 5-7). The purpose of the inclusion of prior
art in an obviousness rejection is to provide evidence of what those of ordinary skill in
the art knew at the time the invention was made. The references serve as a spring board
used by the decision maker to step back in time and into the shoes of one of ordinary
skill in the art at the time of the invention. Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1566-67, 1 USPQ2d 1593, 1595-96 (Fed. Cir.), cert. denied, 481 U.S. 1052
(1987). From the prior art a certain amount of knowledge can be imputed to one of
ordinary skill in the art. How that knowledge is stated is of no matter: It need not be
conveyed directly nor must it be the main topic of discussion within a particular prior art
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