Appeal No. 2001-2533 Page 4
Application No. 09/372,988
range between 10% wt to 25% wt, and a thin layer, the ratio of
impregnation of synthetic resin of which is greater than 28% by weight, is
provided between the skew fiber body layer and the axial fiber body layer,
the skew fiber body layer, the axial fiber body layer and the thin
layer are rolled over substantially the whole length of the tubular body,
and
a ratio of impregnation of synthetic resin each on the skew fiber
body layer and the axial fiber body layer is lower than that of impregnation
of synthetic resin on the thin layer.
(1)
Claim 1 stands rejected under Section 103 as being obvious in view of the
combined teachings of Akatsuka and Fenton.3 It is the examiner’s position that
Akatsuka discloses all of the subject matter except for a thin layer having a ratio greater
than 28% by weight, but that this would have been obvious because “[c]learly an artisan
. . . would have selected a suitable impregnation of resin for a thin layer . . . of greater
than 28% by weight,” for “[i]n view of the patent to Fenton it would have been obvious
. . . in order to have less fibers and a more flexible shaft” (Answer, pages 4 and 5). The
appellant argues in opposition to this conclusion that Akatsuka fails to disclose a ratio
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. 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).
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