Appeal No. 2003-1705 Page 5
Application No. 09/904,058
the suggestion and the expectation of success must be founded in
the prior art, not in the applicant's disclosure." Id.
Thus, a prima facie case of obviousness is established by
showing that some objective teaching or suggestion in the applied
prior art taken as a whole and/or knowledge generally available
to one of ordinary skill in the art would have led that person to
the claimed invention, including each and every limitation of the
claims, without recourse to the teachings in appellants’
disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring).
Here, the examiner simply has not furnished a convincing
rationale explaining how the combined teachings of the applied
references would have led one of ordinary skill to the here
claimed invention, even if they were combinable. Nor has the
examiner furnished any other prior art evidence, such as a
listing of the known properties of polyethylene foam materials at
the time of the invention, that may have been sufficient, in
combination with the other applied references, to suggest the
claimed subject matter to one of ordinary skill in the art of
designing and manufacturing toilet seat seals.
Consequently, we will not sustain the examiner’s rejection.
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