Appeal No. 2002-1444 Page 3
Application No. 09/004,564
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Both of the rejections are under 35 U.S.C. § 103. 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, e.g., 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, e.g., 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 rejection is that claims 7, 8, 13, 14, 20, and 21 are unpatentable over
Peterson in view of Heinecke. It is the examiner’s view that Peterson discloses all of
the subject matter recited in independent claims 20 and 21 except for the liners
comprising “a non-metallic laminate formed by a flexible layer of plastic material” (see
Answer, page 3). However, the examiner asserts that Heinecke teaches a non-metallic
laminate 32 formed by a flexible layer of plastic material in contact with a gate 36 (see
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007