Appeal No. 2004-0430 Page 4
Application No. 09/174,868
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Even when
obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In the rejection under 35 U.S.C. § 103 before us in this appeal (final rejection,
pp. 2-5), the examiner (1) set forth the pertinent teachings of Musacchia's hunting
device for producing sound; (2) ascertained that "Musacchia discloses the claimed
invention except for the game call device constructed as one piece as recited in claims
1, 10, 14 and 17" (the independent claims on appeal); and (3) concluded that:
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to form the game call device as one piece, since it has been
held that forming in one piece an article which has been formed in two pieces
and put together involves only routine skill in the art. Howard v. Detroit Stove
Works, 150 U.S. 164 (1893).
The examiner has incorrectly drawn from the above-noted case law, which
turned on specific facts, a general obviousness rule: namely, that forming several
pieces integrally as a one-piece structure would have been obvious at the time the
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