Ex Parte Kondo - Page 5



          Appeal No. 2005-0564                                                         
          Application No. 09/732,787                                                   
          1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,               
          1783-84 n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley                
          Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);            
          Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d             
          281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985).  In considering the            
          question of the obviousness of the claimed invention in view of              
          the prior art relied upon, the Examiner is expected to make the              
          factual determination set forth in Graham v. John Deere Co., 383             
          U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why            
          one having ordinary skill in the pertinent art would have been               
          led to modify the prior art or to combine prior art references to            
          arrive at the claimed invention.  See also In re Rouffet, 149                
          F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).  However,            
          the motivation, suggestion or teaching may come explicitly from              
          statements in the prior art, the knowledge of one of ordinary                
          skill in the art, or, in some cases the nature of the problem to             
          be solved.  See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d                
          1614, 1617 (Fed. Cir. 1999).                                                 
               Our review of Gerrans shows that although the reference does            
          not explicitly describe how the outer shape of the electrical                
          connector may affect gripping the connector, the disclosed                   
          embodiments clearly show that the outer shape of the molding is              

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