Appeal No. 2002-0266 Page 5
Application No. 09/409,672
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 these rejections is that claims 35, 38-46 and 53 are unpatentable
over Koreska in view of the appellant’s admission. As we understand this rejection, it is
the examiner’s view that all of the subject matter recited in these claims is disclosed in
Koreska, except for the specific liquid that is to be dispensed, and for the materials from
which the tips are made and the shapes of the tips. With regard to the liquid, the
examiner points out that Koreska notes that similar liquids have been dispensed from
similar applicators in discussing the background of the invention, and that it therefore
would have been obvious to one of ordinary skill in the art to dispense them from the
Koreska dispenser. With regard to the tip materials and shapes, the examiner takes
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007