Appeal No. 2003-1502 Page 5
Application No. 09/365,860
21). The wire elements are not described as being “windings,” nor can it be determined
from the drawings that they are anything other than closed annular rings.
We therefore find ourselves in agreement with the appellant that the examiner’s
determination that the wire elements disclosed in Inoue ‘179 are “windings” is not
supported by the evidence. This being the case, it is our conclusion that Inoue ‘179
does not disclose or teach an annular element formed of “a plurality of windings of wire”
and thus does not anticipate the subject matter recited in claim 1 and we therefore will
not sustain the rejection. It follows that we also will not sustain the like rejection of
claims 2, 5 and 10, which depend from claim 1.
The Section 103 Rejection Based Upon Inoue ‘197
As an alternative, the examiner rejects claims 1, 2, 5 and 10 as being obvious2 in
view of Inoue ‘179. As we understand this rejection, it is the examiner’s position that if
the rings of Inoue ‘179 are not considered to constitute “windings,” one of ordinary skill
in the art would have found it obvious to modify the disclosed device by replacing the
closed ring wire elements with “windings,” as such are defined above (Answer, page 4).
2The test for obviousness is what the teachings of the applied 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).
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