Appeal No. 2003-0371 Page 7
Application No. 09/465,941
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).
The first of the Section 103 rejections is that claim 2 is unpatentable over Woods
in view of Carlson. Claim 2 adds to claim 1 the requirement that the holder of each
elongate member is a loop. Carlson is directed to a metal skin buffing fixture, and
discloses in Figure 4A a strap 300 that holds the skin 202 to be polished on the fixture.
It is the examiner’s view that it would have been obvious “to use the teachings of
Carlson et al. in the invention of Woods for securing the elongate members to the other
supporting members of the jig” (Answer, page 4). What is lacking in this rejection is the
required suggestion to combine the references in this manner. The mere fact that the
prior art structure could be modified does not make such a modification obvious unless
the prior art suggests the desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present case, we fail to perceive
any teaching, suggestion or incentive which would have led one of ordinary skill in the
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