Appeal 2007-0561
Application 10/689,465
1 GmbH & Co., 464 F.3d at 1367, 80 USPQ2d at 1651; In re Sovish, 769 F.2d at
2 743, 226 USPQ at 774 (Fed. Cir. 1985)(“The [applicants’] argument presumes
3 stupidity rather than skill.”).
4 It is true that merely finding that each claim feature is present in some prior
5 art reference is not sufficient to establish a prima facie case of obviousness. But
6 that is not what the Examiner has done. There has to be an articulated rational for
7 putting together the combination. For the rejection of independent claims 9 and
8 18, the Examiner located and discussed four prior art references -- Mooney,
9 Meinhardt, Reichman, and Churla, each specifically directed to an electrical
10 grounding clamp apparatus that receives a ground wire. The level of ordinary skill
11 in the art is reflected in these references. These references are both within the field
12 of the inventor’s endeavor as well as reasonably pertinent to the problem the
13 applicants intend to solve, i.e., cumbersome and laborious task of threading a
14 grounding wire through a hole in the wall of a grounding clamp. The Examiner’s
15 stated rationale is that these prior art references illustrate a variety of orientations
16 for the trough structure and set screw in the grounding clamp relative to the
17 grounding member and one with ordinary skill in the art would have had all of
18 these alternative orientations at his or her disposal for selection in a routine task.
19 In other words, one with ordinary skill in the art would know to pick from pre-
20 existing orientations of the trough and set screw, in the absence of anything
21 unpredictable which in this case there is not. We agree. The applicants have not
22 demonstrated why the determination of the Examiner, ostensibly a reasonable one
23 based on the collection of prior art, and plain logic and common sense, is wrong.
24 A grounding clamp does not belong to an unpredictable art. The Examiner
25 is correct that logic and common sense dictates that the selection of various
26 features in the cited prior art references, used for their disclosed purposes and for
13
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