Appeal No. 96-1358
Application No. 08/192,055
The rejection of claim 1 is not sustained.
The Rejections Under Section 103
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).
The first rejection under this section of the statute is
that the subject matter of claims 2-5, 8-12 and 14 would have
been obvious in view of the German reference. Claims 2-5, 7 and
8 depend from claim 1. In our discussion above with regard to
the anticipation rejection, we concluded that the German
reference failed to disclose means for attaching the plate member
to the end of the rail car which are in accordance with the
requirements of the claim. Considering the teachings of the
German reference in the light of the guidance provided by our
reviewing court regarding Section 103 does not alter the fact
that this deficiency is present in the reference. One of
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