Appeal No. 2003-0093 Page 4
Application No. 09/29213
an air distribution baffle having a cap that extends radially
across the inner air passage, the cap having an outer edge
radially spaced from the second partition to define an air
injection annulus and also penetrated by a radially and
circumferentially distributed plurality of air injection orifices.
The examiner has rejected this claim as being obvious2 in view of the teachings
of Mancini. In the course of arriving at this conclusion, the examiner apparently
acknowledges that Mancini fails to disclose or teach “a radially and circumferentially
distributed plurality of air injection orifices” in the cap, for he states:
One of ordinary skill in the art at the time of the claimed
invention, aiming to substantially increase the number of the
Mancini holes 74, would have had no alternative but to add
a second row of holes 74, that would have resulted in a
radial and circumferential distribution, as presently claimed.
The appellant urges that no suggestion exists for modifying the Mancini injector in the
manner proposed by the examiner. We agree.
At the outset, we point out that in view of the disclosure of the invention in Figure
5 and 5A, as well as the arguments advanced by the appellants in the Briefs, we
interpret the phrase “radially and circumferentially distributed” to mean that the orifices
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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