Appeal No. 2001-1915 Page 3
Application No. 09/362,590
The rejection is under Section 103. 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).
The objective of the appellants’ invention is to conceal from view the fasteners by
which a bracket for mounting a luggage rack upon the rear fender of a motorcycle is
attached in order to enhance the aesthetic appearance of the motorcycle. As manifested
in independent claim 1, the invention is a motorcycle comprising a frame having front and
rear wheels and a fender positioned over the rear wheel, a seat, a plurality of fasteners, a
mounting bracket extending under the seat and coupled to the fender by the fasteners
“wherein all fasteners used to secure said mounting bracket to said rear fender are under
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