Appeal No. 98-2158 Page 6
Application No. 08/610,279
end walls, the examiner seeks to dismiss this limitation as an
obvious variation, which "involves only routine skill in the
art." We must point out, however, that there is nothing in the
statutes or case law which makes that which is within the
capabilities or skill of one skilled in the art synonymous with
obviousness. See Ex parte Gerlach, 212 USPQ 471 (Bd. App.
1980). Instead, obviousness under § 103 is a legal conclusion
based on factual evidence (In re Fine, 837 F.2d 1071, 1073, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988)) and it is well settled that
in order to establish a prima facie case of obviousness the
prior art teachings must be sufficient to suggest to one of
ordinary skill in the art making the modification needed to
arrive at the claimed invention (see, e.g., In re Lalu, 747
F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984)). The
examiner, however, has provided no factual basis whatsoever for
concluding that it would have been obvious to join first and
second sections along transverse or end walls in the particular
manner claimed (which transverse or end walls do not even exist
in either Anderson or Scholler). See, e.g., In re GPAC Inc, 57
F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and In
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