Appeal 2007-2315
Application 10/095,265
Prima facie obviousness requires a teaching that all elements of the
claimed invention are found in the prior art and a reason that would have
prompted a person of ordinary skill in the relevant field to modify the prior
art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). In our opinion, the
Examiner has set forth sufficient evidence to establish prima facie
obviousness of claim 8. The Examiner identifies where all elements of the
claimed invention can be found in the prior art and provides a logical reason
to have modified the prior art. “The prima facie case is a procedural tool of
patent examination, allocating the burdens of going forward as between
examiner and applicant. . . . If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.” In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appellant contends there would have been no motivation to have
extended Curry’s grip. “There is nothing in the teachings of Herber or Curry
that would reasonably suggest extending the Curry grip beyond 15 inches,
when the 15 inch grip of Curry without extension would easily
accommodate the markings of Herber” (Suppl. Br. 10-11). We do not agree.
First, as stated by the Examiner:
Curry states that the grip length should be based on what is
desired. Curry gives examples of 12, 13, 14, or 15 inches
[Curry at 2, col. 1, ll. 37-41; Findings of Fact 3]. However by
using the word “desired” and “say” prior to the lengths reveals
that these lengths or range of lengths are not critical and there
might be other lengths desired and obvious to have.
(Answer 5.)
6
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