Appeal No. 1999-0613 Page 4
Application No. 08/592,025
The Rejection Under 35 U.S.C. § 112, Second Paragraph
It is the examiner’s position that dependent claims 5 and 7 are indefinite because
they fail to add further limitations to independent claim 4, from which they depend. We
agree with the appellant that such is not the case with claim 5, for whereas claim 4 recites
that the tubular housing encloses “a substantial portion of the length of said steering shaft,”
claim 5 requires that it surround it “along the entire length.” Clearly, this is a further
restriction on the language of claim 4, and we therefore will not sustain this rejection of
claim 5.
We reach the opposite conclusion with regard to claim 7, noting that the appellant
has not disputed the examiner’s position. This rejection of claim 7 is sustained.
The Rejection Under 35 U.S.C. § 103
All of the claims stand rejected as being unpatentable over Kawabata in view of
Davis. 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,
425, 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
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