Appeal No. 2002-1853 Page 4
Application No. 09/340,339
It is the examiner’s view that all of the subject matter recited in claim 1 is
disclosed in Tsuchida ‘638 except for the required positioning of the spark gap vertically
above the fuel injector nozzle. However, the examiner has taken the position that such
an arrangement is disclosed by Fujieda, and it would have been obvious to one of
ordinary skill in the art to modify Tsuchida ‘638 to meet the terms of claim 1 in view of
Fujieda, suggestion being found in Fujieda’s explicit teaching that problems are caused
if the spark plug gets wet with fuel spray. While we have carefully considered the
arguments presented by the appellants in opposition, they have not persuaded us that
the examiner’s conclusion was in error.
The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The question under 35 U.S.C. §103 is not merely
what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied,
493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). While there must be some suggestion or motivation for one of ordinary skill in
the art to combine the teachings of references, it is not necessary that such be found
within the four corners of the references themselves; a conclusion of obviousness may
be made from common knowledge and common sense of the person of ordinary skill in
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007