Appeal No. 2000-2087 Page 3
Application No. 09/039474
The Examiner’s Rejection
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
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, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
It is the examiner’s view that all of the subject matter recited in claim 1 is disclosed
by Palomera except for the asymmetric claws with a longer pointed claw and a shorter
claw having a flat end. However, the examiner goes on to conclude that it would have been
obvious to one of ordinary skill in the art to modify the Palomera hammer so that it
incorporates this feature, in view of the teachings of Newbrough. In their Briefs, the
appellants argue against this conclusion, and also point out that the references do not
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