Appeal No. 1999-2446 Page 20
Application No. 08/705,592
Claim 9
In our view, the limitations of claim 9 are readable on
Scott. In that regard, the wood fragments of Scott are
inherently larger than 3/8 inch and thus are large enough not
to pass through a separation screen having 3/8 inch openings.
Thus, it is our opinion that claim 9 is readable on Scott's
mat. Since anticipation is the epitome of obviousness, we
sustain the examiner's rejection of appealed claim 9 under 35
U.S.C. § 103 as being unpatentable over Scott.
Claim 10
Claim 10 recites that the mesh openings "have a dimension
of about ½ inch." The examiner has not provided any evidence7
7Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), although
"the suggestion more often comes from the teachings of the
pertinent references," In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources
available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and
(continued...)
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