Appeal No. 2004-2193 Page 4
Application No. 09/737,781
Independent claim 5 stands rejected as being obvious1 in view of the combined
teachings of Busboom and Kobayashi. In arriving at this conclusion, the examiner finds
all of the subject matter recited in claim 5 to be disclosed or taught by Busboom, except
for positioning the air filter intake so it is oriented downwardly. However, the examiner
is of the view that it would have been obvious to modify Busboom in this manner in view
of the teachings of Kobayashi “in order to prevent particles from getting into the engine
air system.” (See Answer, page 3). The appellants argue that Kobayashi is not
analogous art and therefore is improperly applied in the rejection, and that even if it is
considered to be analogous art, there exists no suggestion to combine the references in
the manner proposed by the examiner.
Busboom discloses a riding lawn mower of the type having a water cooled
engine. The problem to which Busboom’s invention is directed is preventing the engine
radiator from becoming clogged by debris carried by the air drawn therethrough. 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 (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).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007