Appeal No. 2006-1867
Application No. 10/820,259
While we have no doubt that one of ordinary skill in the art
could design the primary molded body 6 or 36 of Onoda in
accordance with the claimed invention, the proper test under
§ 103 is not what the skilled artisan could have done but,
rather, what would have been suggested by the cited prior art.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). For the above-stated reasons, we find that the requisite
suggestion to modify Onoda stems not from Bickford but from
appellants' own disclosure.
In conclusion, based on the foregoing, we are constrained
to reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
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PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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LINDA M. GAUDETTE )
Administrative Patent Judge )
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