Appeal No. 2002-2275 Page 4
Application No. 09/652,357
The examiner has rejected this claim on the basis that the subject matter recited
therein would have been obvious1 to one of ordinary skill in the art in view of Shuster
and Hughes. While the examiner has not made specific findings regarding the
disclosure of Shuster as compared to the subject matter recited in claim 1, it would
appear that the examiner believes Shuster discloses all except for the removable
means to cover the adhesive prior to use. However, the examiner expresses the view
that to add this feature to the Shuster device would have been obvious in view of the
teachings of Hughes. See Paper No. 7, pages 3 and 4. Absent from the examiner’s
explanation of the rejection is an expression of the suggestion which would have
motivated one of ordinary skill in the art to make the proposed modification to Shultz.
We find ourselves in agreement with the appellant that the rejection is fatally
defective and cannot be sustained. Our reasoning follows.
Shuster is directed to a device for capturing insects crawling on inaccessible
surfaces such as walls and ceilings. It comprises a handle 14 upon the top of which a
rigid body 12 is fastened. Body 12 carries a roll of adhesive material 30 such as
masking tape (column 2, line 6) on a spool 44 and a sponge-like triangular support pad
1The 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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