No. 1998-0549 Page 3
Application No. 08/661,711
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).
Claim 1 reads as follows:
A metal gasket assembly comprising a substrate stainless steel
sheet with at least one opening, and a peripheral member fitted into said
at least one opening along the periphery thereof, said peripheral member
being made of a metal plate having a thickness greater than that of
substrate stainless steel sheet, and a weld between a radially innermost
edge of said substrate metal sheet and a radially outermost edge of said
peripheral member, said substrate sheet and said peripheral member
being in edgewise abutting relationship, said peripheral member being of
rectangular cross-sectional configuration and having a radial extent
substantially greater than an axial extent thereof.
It is the examiner’s opinion that Dickson discloses all of the subject matter
recited in claim 1 except for welding together the edges of the substrate metal and the
peripheral member and making the substrate sheet of stainless steel. However, the
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