Appeal No. 2003-0360 Page 10
Application No. 09/264,398
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).
The first rejection under Section 103 is that claims 20-22, 24, 25, 27 and 34 are
unpatentable over the combined teachings of Derecktor and Duemmler. In this
rejection the examiner finds all of the claimed subject matter to be disclosed by
Derecktor except for the individual slots at each end of the strut. However, the
examiner takes the position that it would have been obvious to modify the Derecktor
strut by replacing the single full length slot with individual slots at each opposing end
region of the strut in view of the teachings of Duemmler, because doing so “would
involve mere substitution of one functional equivalent for another and . . . would perform
equally well on the Derecktor device” (Answer, page 6). However, one of the objectives
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