Appeal No. 2002-0747 Page 9
Application No. 09/006,982
explanation of the invention how to deliver gases from a mixing chamber such as that
disclosed and claimed in this application to a user/recipient respiratory interface.
This rejection is not sustained.
(5)
Claims 1, 2 and 8-18 have been rejected as being unpatentable6 over Watt. It is
the examiner’s position that Watt discloses all of the subject matter recited in
independent claim 1 except that “Watt only disclose [sic] the use of a single cassette
and not a plurality of cassettes and discloses the air flow device & pulsatile devices at a
mid point of the chamber & not an end” (Answer, page 6). The examiner notes,
however, “that appellant’s [sic] specification does not set forth this specific co-location
of air source & pulsatile devices at an end of the apparatus, as unexpectedly providing
any new result or unexpectedly solving any new problem in the art over the prior art,”
and from this concludes “[a]ccordingly, the examiner considers the selection of such to
be a mere obvious matter of design choice and does not patentably distinguish the
claims over the prior art, barring a convincing showing to the contrary,” and
6 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).
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