Appeal 2007-2606
Application 10/903,376
easier to manipulate to insert into the slot of the frame taught by Hull"
(Answer 14-15, ¶ 27).
4. Appellant's arguments
[25] Appellant argues a lack of motivation to combine Hull and Wenkman
because "the ease of inserting a protective transparent covering in
Hull would not be made greater by making the transparent covering
flexible" (Appeal Br. 6).
[26] Appellant further argues that the combination of Hull and Wenkman
fails to disclose all the elements of claim 2 because Hull does not
disclose a second pair of molding sections with opposing grooves
therein (Appeal Br. at 6).
5. Discussion
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA). "Obviousness is
not to be determined on the basis of purpose alone." In re Graf, 343 F.2d
774, 777, 145 USPQ 197, 199 (CCPA 1965). However, "rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Here, the Examiner has provided a reason for making the
combination, which we find credible and which Appellant has not materially
challenged, i.e., to provide a protective transparent covering that is
malleable, light weight and can be easily inserted into the slotted or grooved
frame members (FFs 23 and 24). Instead, Appellant simply contends that
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