Appeal No. 95-4866
Application 08/179,770
(answer, page 9), and relies upon Hummelshoj in support of
this assertion (answer, page 11). The examiner argues that
Hummelshoj’s first, third and fifth molds in his Fig. 2 are
movable and cooperate with intermediate mold members (answer,
page 11). Hummelshoj, however, as indicated by appellant
(brief, page 10), does not disclose which of his molds are
fixed or movable.
To establish a prima facie case of obviousness, an
examiner must explaining why the teachings from the prior art
itself appear to have suggested the claimed subject matter to
one of ordinary skill in the art. See In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact
that the prior art could be modified as proposed by the
examiner is not sufficient to establish a prima facie case of
obviousness. See In re Fritsch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992).
The motivation relied upon by the examiner for combining
the teachings of the references to arrive at appellant’s
claimed invention comes from the disclosure of appellant’s
apparatus in his specification rather than from the prior art.
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