Appeal No. 2004-0942 Page 3
Application No. 08/718,573
The appellants’ invention is directed to a method for forming a trench in the
surface of the bed of a body of water by means of a water jet suspended from a vessel
floating on the water. The nozzle from which the water jet is emitted is maintained at a
distance above the bed by means of cables, and the water jet strikes the bed in a
concentrated manner to break the coherence of the soil that constitutes the bed in such
a way as to create a trench. Specification, pages 1-3.
Independent claim 36 recites a method of forming a trench in the bed of a body
of water which comprises suspending a pressure line that terminates in a nozzle from a
vessel, positioning the nozzle a distance above the bed, pumping water on board the
vessel and discharging the water through the nozzle downwardly against the bed at an
overpressure “while maintaining said nozzle positioned at said distance above said
bed.” The examiner has rejected this claim as being obvious1 in view of the teachings
of Cousineau, in the course of which the finding is made that the reference discloses a
downwardly directed nozzle 18, 18' that is located a distance “above the bed” when
water is being discharged therefrom (Answer, page 3). The appellants argue that
1The 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).
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