Appeal No. 2002-2065 Page 4
Application No. 09/398,688
extending past a connection point of the arc-shaped ring with the
intermediate ring and toward a center of the one of the bottom and
cover, and
wherein the section, which extends past the connection point of the
arc-shaped ring with the intermediate ring, has a thickness which
constantly decreases from the connection point to an inner edge of this
section.
It is the examiner’s view that all of the subject matter recited in claim 16 is
disclosed in GB 032 except for the section which extends past the connection point of
the arc-shaped ring with the intermediate ring having a thickness which constantly
decreases from the connection point to an inner edge of the section (Answer. pages 3
and 4). According to the examiner, it would have been obvious2 to modify the structure
of GB 032 to provide this feature, in view of the teachings of either of the secondary
references. Among the arguments raised by the appellants in opposition to this
rejection are two which we agree cause this rejection to be fatally defective.
2The 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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