Appeal No. 2004-1666 Page 4
Application No. 09/586,912
The examiner has rejected this claim as being obvious1 in view of the combined
teachings of Grannis, Isgur and the admitted prior art. In arriving at this conclusion, the
examiner has found all of the subject matter recited in the claim to be disclosed or
taught by Grannis, except for the particular pedestal boxes and the type of sealant
specified. As to the first of the missing limitations, it is the examiner’s view that the
switchgear recited by Grannis “would encompass” those named in the claim. With
regard to the sealant, the examiner takes the position that it would have been obvious to
modify the Grannis system by replacing the disclosed sealing means with a sealant of
the type disclosed by Isgur “since merely the substitution of one plastic part for another
is contemplated,” and to utilize the specified types of insecticides since, as evidenced
by the admitted prior art, they were known at the time of the appellants’ invention and
solve no stated problem. See Paper No. 21, pages 3 and 4. We do not agree, on the
basis of the reasoning that follows.
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 under 35 U.S.C. §103, 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. Ex parte Clapp,
227 USPQ 972, 973 (BPAI 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, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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