Appeal No. 2001-2382 Page 5
Application No. 09/376,461
flashing, that the seam is welded, and that the weld constitutes a “surface strengthening
anomaly.” We first point out that even if one were to consider that there is a joint
between the flashing curb and skirt, there is no evidence from which to conclude that
the seam is welded. Moreover, even if it were a welded seam, in the absence of
supporting evidence it cannot be concluded that by its mere presence the seam
constitutes a “strengthening anomaly” rather than, for example, a weakened point. The
Section 102 rejection of claims 6-9 therefore cannot be sustained.
The Rejections Under Section 103
The 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. 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).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007