Appeal No. 2004-0127 Page 3
Application No. 09/765,605
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
All of the claims stand rejected as being obvious2 in view of the combined
teachings of four references. With regard to claim 1, the sole independent claim, the
examiner has found all of the subject matter to be disclosed in Dassler, except for the
tread being made of leather, the presence of a membrane permeable to vapor and
impermeable to water sealed to the peripheral regions of the tread, and the inserts
being made of plastic (Answer, page 4). However, the examiner takes the position that
it would have been obvious to modify the Dassler shoe to meet the terms of claim 1 in
view of the teachings of the other three references. The appellant argues that no
suggestion exists to combine the references in the manner proposed by the examiner.
2The 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. 1988), cert. denied, 488 U.S. 825
(1988).
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