Appeal No. 2004-0785 Page 12
Application No. 09/252,635
multiple connected units, each unit comprising a module having a corridor
section and a module comprising a horizontal utility chase section, whereby the
corridor sections connect to form an access corridor and the utility chase
sections connect to form a horizonal utility chase containing a utility feed.
In the rejection of claim 13, the examiner (answer, p. 5) determined that "it would
have been obvious to one having ordinary skill in the art at the time the invention was
made to modify Hopkins' unit layout so as to create utility chases positioned that run
across adjacent units to increase size and access from different units."
Clearly the examiner has not met the initial burden of presenting a prima facie
case of obviousness since the examiner has not presented any evidence that would
have led one of ordinary skill in the art to have modified Hopkins to arrive at the claimed
invention. Evidence of a suggestion, teaching, or motivation to modify a reference may
flow from the prior art references themselves, the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),
although "the suggestion more often comes from the teachings of the pertinent
references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The range of sources available, however, does not diminish the requirement for
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