Appeal No. 1999-1754
Application No. 08/800,230
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
Claims 3, 5 and 7, all of which depend from claim 1,
stand rejected as being unpatentable over Strader. It is the
examiner’s position that it would have been obvious to one of
ordinary skill in the art to locate the leverage feature the
claimed predetermined distance from the back of the reel
(claims 3 and 5) as a result of routine experimentation, and
that to provide adjustable mounting means for the reel (claim
7) would have “been within the purview of one skilled in the
art” (Paper No. 3, page 2). Be that as it may, even
considering Strader in the context of Section 103, it is our
view that the shortcomings of the reference discussed above
with regard to the Section 102 rejection of claim 1 are not
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007