Appeal No. 2003-1390
Application No. 08/989,342
ordinary skill in the art at the time the invention was made.
In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). When an obviousness determination is based on a
combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “The factual inquiry whether to combine references must
be thorough and searching.” McGinley v. Franklin Sports, Inc,
262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001).
5. Rejection of claims 18-21 under 35 U.S.C. § 103 as
unpatentable over any one of Hinkes, Lopez or Nakanishi in view
of Budden
The examiner relies on Budden as disclosing “that the
apertures in a template can be formed by cuts through the sheet
which cut pieces remain in position in the template at
manufacture but are readily removable therefrom (i.e., scoring).”
Examiner’s answer, page 14. According to the examiner, it would
have been obvious to one of ordinary skill in the art to have
modified the primary references to include scoring as this would
enable formation of apertures that are readily removable pieces
from the template. Id.
With respect to the rejections based on Hinkes or Lopez in
view of Budden, we note that Budden fails to remedy the
deficiency of the primary references in failing to disclose
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