Appeal No. 1999-1560
Application No. 08/974,108
no test results or statistical data comparing Shimizu's device to the
claimed device. Further, the examiner (Answer, pages 6-7) explains
that the test for obviousness is "what the references as a whole
would have suggested to one of ordinary skill in the art," and,
therefore, "it is not necessary that the reference(s) actually
suggest, expressly or in so many word, [sic] the changes or
improvements that the appellants have made."
First, we note that for a rejection under 35 U.S.C. § 103, the
examiner is required to provide a reason from some teaching,
suggestion or implication in the prior art as a whole, or knowledge
generally available to one of ordinary skill in the art, why one
having ordinary skill in the pertinent art would have been led to
modify the prior art to arrive at the claimed invention. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed.
Cir. 1988), cert. denied, 488 U.S. 825 (1988). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Furthermore, "[o]bviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor." Para-
Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087,
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007