Appeal No. 2004-2244
Application No. 10/208,906
This rejection still would be improper even if Holtrop were
assumed to be analogous art. In this regard, it is well settled
that, when a rejection depends on a combination of prior art
references (as here), there must be some teaching, suggestion or
motivation to combine the references. In re Rouffet, 149 F.3d
1350, 1355-56, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). In
accordance with the aforequoted obviousness conclusion from page
3 of the answer, the examiner contends that it would have been
obvious “to modify the scrim cloth of Holtrop so as to employ a
selvedged periphery as taught by Van Auken because this
arrangement would provide Holtrop’s scrim with reinforced edging
(see col. 3, lines 17-18 of Van Auken) as is conventionally known
in the scrim cloth/fabric” (emphasis deleted).
The examiner’s contention is deficient in that no reason has
been given as to why an artisan would have been motivated to
“provide Holtrop’s scrim with reinforced edging” (id.) From our
perspective, there is simply no reason to believe that the
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