Appeal No. 2002-1810 Page 7
Application No. 09/336,503
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 appellants' 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).
It is the examiner’s view that Goss discloses all of the subject matter recited in
claim 2 except for the requirement that the load beam rigid portion is solid. However,
the examiner has taken the position that it would have been obvious to one of ordinary
skill in the art to modify the Goss two-piece load beam structure by making the rigid
portion solid “to reduce transmission losses from the microchip” (Paper No. 16, page 3).
We do not agree.
Goss states that his invention provides a flat and extremely rigid monocoque
region which is “low in mass, yet extremely strong and able to withstand increased
momentum and torque forces,” and which “includes a well-ventilated cavity specially
suited to securely contain and protect the IC and its terminals” (column 3, line 65 et
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007