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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