Appeal No. 2002-0794
Application 09/037,584
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch, 972 F.2d 1260, 1265-66,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The requirement for objective factual underpinnings for a rejection under § 103(a) extends to the
determination of whether the references can be combined. See In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002), and cases cited therein.
As appellant points out (e.g., brief, pages 2, 4 and 5), when considered in light of the
written description in the specification as interpreted by one of ordinary skill in this art, see, e.g.,
In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain
language of appealed claim 11, and appealed claims dependent therein, requires that the claimed
cutting line comprises at least “a layer of adhesive . . . bonded all over” the monofilament core,
thus securing a granular coating “entirely covering an outer surface of” the core. Appellant
contends that the applied prior art would not have suggested to one of ordinary skill in this art a
cutting line having a granular coating “which completely covers the” monofilament core as
required for the claimed “cutting line for a rotary head brush cutter and edge trimmer”
encompassed by the appealed claims (brief, pages 4 and 5).
We find that Boland discloses a “composite cutting line [that] includes a nylon blend
carrier which is impregnated from 1%-30% (preferably 6%-15%) with an inorganic grit material”
which “provides a superior balance between line integrity and cutting ability” (col. 1,
lines 60-62, and col. 3, lines 64-66; emphasis supplied). Thus, one of ordinary skill in this art
would have found it apparent from this disclosure and from Boland FIG. 1 that the “grit material”
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