Ex parte ROSS, JR., et al. - Page 5

          Appeal No. 96-0037                                                          
          Application 08/237,224                                                      

               The examiner's second theory in support of the position that           
          the claims would have been obvious is that                                  
               Barnes does not teach away from the claimed invention.                 
               Barnes specifically teaches that it is preferable to                   
               position the opening downwardly . . . .  A fair reading                
               of Barnes suggests that locating the opening at any                    
               other position would be a non-preferred embodiment.                    
               It, however, does not teach against locating the                       
               opening upwardly (Answer, paragraph bridging pages 4                   
               and 5).                                                                
          We do not agree with this rationale, either.  Here, the examiner            
          has taken the position that since the downward orientation in               
          Barnes is labeled as being "preferable," one of ordinary skill in           
          the art would have understood that all other orientations also              
          are contemplated by the reference, though they are non-preferred.           
          The only support provided for this conclusion is the Japikse                
          case, which we agree with the appellants is not persuasive.                 
               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 In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881             
          (CCPA 1981)), and 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 to arrive at the claimed                    
          invention (see Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985)).              


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