Appeal No. 96-0733
Application 08/173,805
elements such that the expansion of the gel is accommodated in
such a fashion that it is not lost when the connectors are mated
and will return to its initial position upon demating. In
particular, the appellants urge that there would have been no
reason to make the Chan terminal and separate connector of
elastomeric material because the patentee already had provided
for the expansion of the gel by means of a flexible diaphragm.
Hindsight, the appellants contend, is the only means by which the
one of ordinary skill in the art would have been motivated to
modify the Chan device in the manner proposed by the examiner.
The guidance provided by our reviewing court with regard to
rejections based on obviousness is as follows: 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). In
establishing a prima facie case of obviousness under 35 U.S.C.
§ 103, 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 or to combine reference teachings to arrive
at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(BPAI 1985). To this end, the requisite motivation must stem
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007