Appeal No. 1997-3096
Application 08/391,407
references] arose from the very nature of the subject matter involved, the size of the card
intended to be enclosed.”); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89
(Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of various teachings
in order to form the claimed invention] must be explicit in, or may be fairly inferred from, the
references, is decided on the facts of each case, in light of the prior art and its relationship to the
applicant’s invention.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of ordinary skill in the art.”).
Accordingly, since a prima facie case of obviousness has been established over the
applied prior art and admitted knowledge in the art, we have again evaluated all of the evidence
of obviousness and nonobviousness based on the record as a whole, giving due consideration to
the weight of appellants’ arguments. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We cannot agree with appellants (brief, page 7) that one
of ordinary skill in this art would not have combined the teachings of Nakamura with the
knowledge in the art acknowledged in appellants’ specification and thus obtained the claimed
articles as “deflectors on vehicles.” As we pointed out above, while the claims may describe the
encompassed claimed article with respect to the intended use as covering for an inner panel of a
vehicle door, such use per se is not a limitation of the claims. Furthermore, it is clear that
Nakamura teaches that the disclosed sheet material resists water and is useful for “waterproof
covers,” and thus the reference is clearly applicable prior art with respect to a “deflector” that
reduces “the intrusion of water,” and therefore to the “deflector” arts. See In re Clay, 966 F.2d
656, 658, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). Accordingly, on this evidence, we must
conclude that the examiner has appropriately combined Nakamura with the admitted knowledge
in the prior art without recourse to appellants’ disclosure.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the references applied by the examiner
combined with knowledge in the prior art discussed in appellants’ specification with
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