Appeal No. 1999-2204 Page 3
Application No. 08/951,003
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Black in view of either Dunn or Gleason, each taken further in view of any one of
Bergman, Jorgensen, Streuber or Haselden.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Answer (Paper
No. 21) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 20) and Reply Brief (Paper No. 22) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The three rejections posed by the examiner are under 35 U.S.C. § 103, and we
have evaluated them in the light of the guidance provided by our reviewing court.3
3The 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.
(continued...)
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