Appeal No. 2003-1732 Page 4
Application No. 09/646,703
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).
Doerre discloses a joint prosthesis comprising first and second components
which are pressed together to form a connection. The first component (3) is the male
component and comprises a metal or metal alloy (column 3, lines 12-14). It is provided
with “increased deformability” of its surface layer (column 2, lines 12-15) by means of
circumferential grooves (4) therein or by heat treating the surface, or by placing a
coating of suitable metal alloy on the surface which is soft and flexible when compared
to the core of the metal component (column 2, lines 40 and 41). Doerre’s second
component (2) is the female component and comprises a ceramic material (column 3,
lines 5-7). The second component can be roughened to have a better connection with
the first component, and can in addition be provided with ground circumferential
grooves (column 2, lines 50-55; column 3, line 63-column 4, line 5).
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