Appeal No. 2004-1922 Page 3
Application No. 09/760,567
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
(1)
Independent claim 14 and dependent claims 15-18 stand rejected under
35 U.S.C. § 103(a) as being obvious1 in view of the combined teachings of Allsop and
Schwarting. In arriving at this conclusion, the examiner has found all of the subject
matter recited in claim 14 to be disclosed or taught by Allsop, except for a means for
activating and deactivating the shock-absorbing member. However, the examiner is of
the view that to modify the Allsop device by adding this feature would have been
obvious to one of ordinary skill in the art in view of the teachings of Schwarting “so as to
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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