Appeal No. 2004-0107 Page 6
Application No. 09/963,122
The rejection under 35 U.S.C. § 112, second paragraph, is not sustained.
The Rejections Under Section 103
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).
Looking first to independent claim 13, the examiner finds all of the subject matter
recited in the claim to be disclosed by the appellants in the admitted prior art (APA) set
forth on page 3 of the specification, except for the “thin rubber layer laid adhering to the
inside of said outer coat.” However, it is the examiner’s position that it would have been
obvious to one of ordinary skill in the art to add such a layer to the soccer shoe
described in the APA in view of the teachings of Dreschler “to aid in waterproofing the
shoe so it can be used in inclement weather and protecting the user’s foot from sudden
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