Appeal No. 98-0383 Page 4
Application No. 08/549,869
The Rejection Under 35 U.S.C. § 103
The examiner has rejected both claims as being
unpatentable over Weder ‘229 in view of Culberg. We have
evaluated this on the basis that the examiner bears the initial
burden of presenting a prima facie case of obviousness (see In
re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993)), which is established when the teachings of the
prior art itself would appear to have suggested the claimed
subject matter to one of ordinary skill in the art (see In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the
references. Rather, the test for obviousness is what the
combined teachings of the references would have suggested to
one of ordinary skill in the art (see Cable Electric Products,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-
87 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007