Appeal No. 2000-0588 Page 13
Application No. 08/824,110
As for claim 17, we note that, 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, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Claim 17 depends
from claim 15 and further calls for a visual display displaying numbers associated with
the actuation of said keys. We find no such disclosure in Wingate and the examiner
neither pointed to any such disclosure in Wingate nor offered any explanation as to why
such a feature would have been obvious. Thus, the examiner’s rejection of claim 17 is
not sustained.
The examiner’s rejection of claims 6-9, which are directed to a toy pager, as
being unpatentable over Wingate is grounded on the examiner’s position that “[i]t would
have been obvious to have made a Wingate toy in the form of a pager in order to
appeal to the widely known desire for a pager of the very young that wish to emulate
their older siblings or parents” (final rejection, page 4). Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis. In making such a rejection, the examiner has the
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