Appeal No. 2003-0223 Page 3
Application No. 09/777,647
The 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).
Claim 5 stands rejected as being unpatentable over applicant’s admitted prior
art, Mowery, Lantz, Steele and Wentzel (Paper No. 7, page 2). The examiner has
described the admitted prior art in terms of portions of the appellant’s invention as
shown in Figures 1-4, and has concluded that it “teaches all claimed elements except
for a circular horizontal flange (analogous to 28) of the drain assembly being threadingly
attached via a bushing to an attachment bushing (analogous to 40)” (Paper No. 7, page
3). The examiner continues by pointing out features of the devices disclosed by
Mowery, Lantz, Steele and Wentzel (Paper No. 7, pages 3 and 4). However, nowhere
does the examiner explain how the device of the admitted prior is to be modified in
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007