Appeal No. 2004-1796 Page 5
Application No. 09/682,167
claims 11 and 13, it is our view that one of ordinary skill in the art would have
recognized from the specification and from the language of claims 1 and 5, from which
the disputed claims depend, that “the ejection charge” refers to side thrust generated by
the engine at or near the apogee of the flight (specification, page 3).
The Section 112 rejection of claims 1-14 is not sustained.
The Rejections Under Section 103
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 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).
(1)
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