Ex Parte Rudow et al - Page 5




          Appeal No. 2003-0628                                                        
          Application No. 09/860,493                                 Page 5           


          as an option with a reasonable expectation of success in avoiding           
          similar knee hazards or limitations of knee positioning in a golf           
          cart construction.  Thus, we are in agreement with the examiner             
          that the applied prior art would have rendered the appealed                 
          claims prima facie obvious within the meaning of 35 U.S.C. § 103.           
               Nor do we find appellants arguments persuasive for reasons             
          stated by the examiner in the answer.  Appellants maintain that             
          Bonito and Dillon are not concerned with providing shade for the            
          display monitor as taught by appellants.  However, in reaching              
          the conclusion that the herein claimed subject matter is prima              
          facie obvious over the teachings of the applied references, we              
          also note that the prior art references in question need not                
          provide all of appellants* reasons, such as an alleged increase             
          in shade for the display monitor, to establish a prima facie case           
          of obviousness.  See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d             
          1309, 1311 (Fed. Cir. 1996) (the motivation to combine features             
          need not be identical to that of appellant to establish a prima             
          facie case of obviousness).  Furthermore, to the extent                     
          appellants may have recognized another potential advantage of the           
          claimed monitor location that would have arisen by otherwise                
          following the teachings of the prior art, that recognition does             
          not necessarily form a basis for patentability.  See In re                  







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