Appeal No. 2001-2656 Page 7
Application No. 09/208,514
with regard to the first paragraph rejections, it is our view that the metes and bounds of
claims 1 and 20 clearly are discernible to one of ordinary skill in the art, and therefore
this rejection is not sustained.
The Rejections Under Section 103
The first of these rejections is that the subject matter of claims 1-10 would have
been obvious to one of ordinary skill in the art in view of the combined teachings of
Cunningham and Platts.5 It is the examiner’s view that Cunningham discloses all of the
subject matter recited in claim 1 except for the requirement that the material covering
the recess be expandable, but that such a feature is taught by Platts and it would have
been obvious to one of ordinary skill in the art to modify the Cunningham carrying bag
“in order to provide adjustment means for the carrying bag to receive many objects”
(Answer, page 8).
The objective of the Cunningham invention is to provide a pack that is capable of
supporting a load “without sagging or bending” (column 1, line 31). To accomplish this,
5The 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 14 Next
Last modified: November 3, 2007