Appeal No. 2001-2612 Page 6
Application No. 09/479,741
reference,2 it is our view that such clearly is not the case here, for since the eight figures
are described as separate emotions in the reference, the selection of three of them to
arbitrarily be labeled as representations of different intensities of a single emotion flies
in the face of the Frank invention, and therefore would not be considered in this vein by
one of ordinary skill in the art. Interestingly, the examiner seems to support our
conclusion by virtue of the statement on page 6 of Paper No. 5 that “[t]hough Frank
teaches different emotions for each figure . . .,” although the discussion continues by
nevertheless concluding that the Figures are different states of a “respective one and
only emotion.”
The rejection of independent claims 1 and 3 and, it follows, of dependent claims
2, 4-6 and 8, as being anticipated by Frank is not sustained.
The Rejection Under Section 103
Claims 7, 9-20 and 22 stand rejected as being obvious3 in view of Frank.
2Kalman v. Kimberly-Clark Corp, 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984)
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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