Ex parte KENDRICK - Page 11




          Appeal No. 1999-2064                                      Page 11           
          Application No. 08/619,853                                                  


               The appellant argues (brief, pp. 5-6) only that the                    
          limitation that the substrate surface is "devoid of a                       
          camouflage pattern" is not obvious from Mowry's claim 12 since              
          parent claim 11 of Mowry specifically recites "a camouflage                 
          pattern."  We do not agree.  In our view, it would have been                
          obvious at the time the invention was made to a person having               
          ordinary skill in the art to omit Mowry's camouflage pattern                
          and its associated function for the self evident advantages                 
          thereof (e.g., cheaper to manufacture).  We reach this                      
          conclusion of obviousness based upon the basic principle that               
          the question under 35 U.S.C.  103 is not merely what the                   
          references expressly teach but what they would have suggested               
          to one of ordinary skill in the art at the time the invention               
          was made.  See Merck & Co., Inc. v. Biocraft Laboratories,                  
          Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.),                  
          cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d                
          413, 425, 208 USPQ 871, 881 (CCPA 1981).  That is, the                      
          question of obviousness in this instance cannot be approached               
          on the basis than an artisan having ordinary skill would have               
          known only the subject matter of Mowry's claim 12, because                  
          such artisan is presumed to know something about the art apart              







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