Appeal No. 2001-2251 Page 5
Application No. 09/345,857
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).
According to the examiner, Schulz and Sporing each disclose a consumer
product having a latticework first indicia thereon, and Hay and Walker each disclose a
package in combination with a consumer product contained therein, the package having
an external face with first indicia disposed thereon and the consumer product having a
second indicia thereon which is “matching (harmonizing with) the first indicia.” The
examiner then opines that it would have been obvious to provide the package with an
indicia having the claimed relationship with the latticework indicia on the consumer
product “to provide a purely aesthetic design appearance combination between the
contents and the package,” considering that the design features “fail to provide any new
or unexpected utility.” See Answer, page 5.
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