Ex parte SCHMITT et al. - Page 7




               Appeal No. 1999-2660                                                                           Page 7                  
               Application No. 08/850,313                                                                                             


               having a base length (l) and width (w) closely approximating the depth (d1) and width (w1),                            
               respectively, of a computer component (72) (column 6, lines 30-33).                                                    


                       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, e.g., Uniroyal, Inc. v. Rudkin-               

               Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825                          

               (1988).                                                                                                                

                       As the examiner, in rejecting claims 1-6, 9-14, 17 and 19, has not proffered any reason                        
               why one of ordinary skill in the art would have been led to modify Reiter so as to arrive at the                       
               claimed invention, we shall not sustain the examiner's rejection of independent claims 1, 9, 17                        
               and 19, or of claims 2-6 and 10-14 which depend from claims 1 and 9, as being unpatentable                             
               over Reiter.                                                                                                           
                       Turning next to the examiner's rejection of claims 7, 8, 15, 16, 18 and 20 under 35                            
               U.S.C. § 103 as being unpatentable over Reiter in view of Hardt, we recognize that Hardt                               
               discloses a stabilizing apparatus (10) which extends only along a relatively short portion of the                      








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