Appeal No. 03-0877 Page 7
Application No. 09/601,884
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 the combined teachings of
Parikh and Dannenberg, the latter being applied for teaching that perforated skin in a
boundary layer control system can be made of metal. Be that as it may, considering
Parikh in the light of Section 103 does not alleviate the shortcomings discussed above
with regard to the limitations of claim 14, from which claim 5 depends, and the addition
of Dannenberg fails also to do so. This being the case, it is our view that Parikh and
Dannenberg fail to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 5, and we will not sustain this rejection.
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