Appeal No. 2002-1181 6
Application 09/576,154
forth in the claims from which they depend. We do not agree with the examiner that
such a recitation causes the claims to be indefinite.
For the reasons set forth above, the Section 112 rejection of claims 1-21 is not
sustained.
The Rejection Under Section 103
It is the examiner’s view that the subject matter of claims 12 and 15-21 would
have been obvious to one of ordinary skill in the art in view of the combined teachings
of Novak and McNett (Paper No. 7, page 5). The appellants argue that no suggestion
exists for modifying the Novak bubble-blowing toy in the manner proposed by the
examiner, specifically, that the references provide no motivation for one of ordinary skill
in the art to modify the Novak device by providing it with a rounded bottom.
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
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