Appeal No. 2002-1062 Page 3
Application No. 09/285,607
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Claims 1, 3 and 4 stand rejected as being obvious1 in view of the combined
teachings of Lorrance and Anderson. It is the examiner’s view that all of the subject
matter recited in these claims is disclosed by Lorrance except for the requirement for
forming a protrusion on the top surface of the mat. However, the examiner has taken
the position that it would have been obvious to one of ordinary skill in the art to modify
the Lorrance structure in such a manner as to provide this feature, in view of the
teachings of Anderson.
1A prima facie case of obviousness is established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of ordinary skill in the art (see In re Bell,
991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is not to say, however, that the
claimed invention must expressly be suggested in any one or all of the references, rather, the test for
obviousness is what the combined teachings of the references would have suggested to one of ordinary
skill in the art (see, for example, Cable Elec. Prods. v. Genmark, 770 F.2d 1015, 226 USPQ 881 (Fed. Cir.
1985)), considering that 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, 163 USPQ 545 (CCPA 1969)), with skill being
presumed on the part of the artisan, rather than the lack thereof (see In re Sovish, 769 F.2d 738,
226 USPQ 771 (Fed. Cir. 1985)). Insofar as the references themselves are concerned, we are bound to
consider the disclosure of each for what it fairly teaches one of ordinary skill in the art, including not only
the specific teachings, but also the inferences which one of ordinary skill in the art would reasonably have
been expected to draw therefrom (see In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)
and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)).
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