Appeal No. 2003-0541 Page 4
Application No. 09/645,845
with the same working end because “Rogers suggests the use of such a set of sockets
to allow use of the set on various sized elements.” Answer, page 3.
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).
Applying this guidance to the situation at hand leads us to conclude that the
rejection of claim 13 cannot be sustained. Our reasoning follows.
Bayouth is directed to a wrench for removing hard-to-reach nuts from faucets
(see Figure 2). The wrench comprises a cylindrical pipe 11 and a socket 16. The
cylindrical pipe has notches 12-14 at one end and holes 17 and 18 at the other end.
The socket has an inner opening configured to accommodate the nut or other item to
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