Appeal No. 2005-1378 3
Application No. 09/227,242
Under 35 U.S.C. 103, to establish a prima facie case of obviousness, there must be
some objective teachings or suggestions in the prior art reference and/or knowledge
generally available to a person having ordinary skill in the art that would have led such
person to arrive at the claimed subject matter. See generally In re Oetiker, 977 F.2d 1443,
1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)(Nies J., concurring); In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). The knowledge generally
available to a person having ordinary skill in the art includes the appellants’ admission
regarding what was known at the time of the invention. In re Nomiya, 509 F.2d 566, 570-
71, 184 USPQ 607, 611-12 (CCPA 1975)(the admitted prior art in applicants’ specification
may be used in determining the patentability of a claimed invention); in accord In re Davis,
305 F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).
With the above precedents in mind, we turn to the examiner’s rejection of claims 1,
3, 5, 8 and 11 under 35 U.S.C. § 103 as unpatentable over the disclosure of Nagarajan.
We note that the appellants do not dispute the examiner’s finding that Nagarajan discloses
or suggests a metal core weld wire comprising a metal-core composition between
approximately 13 to 45% of the total wire weight and a steel sheath having a carbon
content of 0.005 to 0.15% carbon. See the Brief and Reply Brief in their entirety. Rather,
the appellants argue that the carbon content in the steel sheath taught by Nagarajan would
not have suggested to one of ordinary skill in the art to employ a steel sheath having a
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