Appeal No. 2001-2629 Page 5
Application No. 08/931,080
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).
The first of the Section 103 rejections is that claims 11, 16, 18 and 19 are
unpatentable over Schmitz in view of Cooper, Reindl and Pigneul. As we understand
this rejection, it is the examiner’s position that all of the subject matter recited is
disclosed or taught by Schmitz, except for the replaceable absorbent liner being
separate from the reusable garment. With regard to this feature, it is the examiner’s
view that it would have been obvious to modify the one piece Schmitz garment into a
two-piece arrangement having a separate liner, in view of the teachings of Cooper,
Reindl and Pigneul (Paper No. 16, page 5).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007