Appeal No. 2004-1920 Page 4
Application No. 09/302,1999
(1)
The first of the examiner’s rejections is that independent claims 1 and 13 and
dependent claims 6-12, 16, 17, 19 and 20 are unpatentable over Moeller in view of De
Rosa and Pesaturo.
The examiner finds all of the subject matter recited in claim 1 to be disclosed or
taught by Moeller, except for using the impact tool to insert into or remove from the
ground a closed, pointed, hollow pole such as those used on beach umbrellas.
However, the examiner has taken the position that it would have been obvious to so
utilize the Moeller impact device in view of the teachings of De Rosa and Pesaturo. 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).
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