Appeal No. 2002-2021 Page 8
Application No. 09/024,077
We reach the same conclusion with regard to the examiner’s like comments
about claims 6 and 14. In each case, the examiner has taken the position that
“connected to” must be interpreted as meaning directly connected to. It is our view that
this is too restrictive, based upon the common applicable definition of “connected”5 and
the description of the invention in the specification.
This rejection is not sustained.
(4)
The examiner has rejected claims 1, 2, 4, 5 and 11 under Section 103 as being
obvious6 in view of the combined teachings of Semenov and Musschoot. It is the
examiner’s view that Semenov discloses all of the subject matter recited in these claims
except for the particulars of the rotatable and reversible drive. However, the examiner
has taken the position that it would have been obvious to provide the Semenov
apparatus with this feature in view of the teachings of Musschoot. We do not agree.
5Joined or fastened together, usually by something intervening. Webster’s New Collegiate
Dictionary, 1973, page 240.
6The 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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