Ex parte RASMUSSEN - Page 6

          Appeal No. 1998-2240                                       Page 6           
          Application No. 08/443,058                                                  

                         The Rejection Under 35 U.S.C.  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, for example, In re Keller, 642 F.2d 413,                  
          208 USPQ 871, 881 (CCPA 1981).  In establishing a prima facie               
          case of obviousness, 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 (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, 1051, 5 USPQ2d 1434,                                             
          1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).                        
               Independent claim 1 stands rejected as being unpatentable              
          over Wigal in view of Duke.  This claim requires, inter alia,               

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007