Appeal No. 2005-1226 Page 4
Application No. 10/151,179
The examiner attempts to dismiss the difference in the relative positions of the
city symbols between appellants’ claims and Kim by declaring that it would have been
obvious “to position the symbols at any desired location, since it has been held that
rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86
USPQ 70" (answer, page 4). This position is not well taken. First, unlike the situation in
In re Japikse, 181 F.2d 1019, 1023, 86 USPQ 70, 73 (CCPA 1950), the operation of
Kim’s clock would be substantially modified by rearranging the city stickers or symbols
such that the symbol or indicator of the city which is behind in time is positioned
clockwise, rather than counterclockwise, relative to the city which is ahead in time.
Moreover, the examiner has not proffered any reason why one of ordinary skill in
the art would have been motivated to modify Kim in the manner proposed by the
examiner to arrive at appellants’ claimed invention. In establishing a prima facie case of
obviousness, 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. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). Evidence of a suggestion, teaching or motivation
to modify the prior art reference may flow from the prior art reference itself,
the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of
the problem to be solved, although the suggestion more often comes from the teachings
of the pertinent references. The range of sources available, however, does not diminish
the requirement for actual evidence. That is, the showing must be clear and particular.
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