Appeal No. 2001-2589 Page 10
Application No. 09/072,911
accurate,5 it is our view that one of ordinary skill in the art would have been so taught by
Herman.
However, even if the Rotax device were modified by providing visual radial
indications on the guide or its support member, as proposed by the examiner, such
would not overcome other shortcomings which we have set forth above. In particular,
the modified Rotax cutter still would not be a scissors and, absent evidence to the
contrary, would not be capable of cutting sheet material to a “desired depth.” This being
the case, it is our conclusion that the evidence adduced by the examiner, that is,
the combined teachings of Rotax and Herman, fail to establish a prima facie case of
obviousness with regard to the subject matter recited in claim 1, and we will not sustain
the rejection. It follows that we also will not sustain the like Section 103 rejection of
dependent claim 2.
Dependent claim 3 adds to claim 2 the requirement that the first blade have
visual linear mensuration markings thereon for determining the depth of a desired cut in
the sheet material. This claim stands rejected on the basis of Rotax and Herman, taken
further with Go, which was cited for its teaching of providing one of the blades of a
5While there must be some suggestion or motivation for one of ordinary skill in the art to combine
the teachings of references, it is not necessary that such be found within the four corners of the
references themselves; a conclusion of obviousness may be made from common knowledge and
common sense of the person of ordinary skill in the art without any specific hint or suggestion in a
particular reference. See In re Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Further,
in an obviousness assessment, skill is presumed on the part of the artisan, rather than the lack thereof. In
re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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