Appeal No. 2005-1416 Page 4
Application No. 09/771,782
having a sport projectile shape. The Examiner determined that the prior art disclosed
in the specification describes necklaces having baseball or football beads, i.e., beads
having a sport projectile shape. The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art to perform the method of making a
necklace, disclosed by Bateholts, employing molds for beads in the shape of a sport
projectile. (Office action mailed March 31, 2003, p. 3).
Appellant argues that the prior art discussed in the specification merely shows
that some elements of the claimed invention are old and there is no suggestion to
combine the references. (Brief, pp. 3-4).
We do not find Appellant’s arguments persuasive. The Examiner finds, and
Appellant does not specifically dispute, that a person of ordinary skill in the art would
have been motivated to “combine or modify the teachings of Bateholts with the
admitted prior of record is to produce diverse product lines of beaded necklaces, i.e.,
beaded necklaces with varying designs [inclusive of a sport projectile shape] which
have appeal to a wide range of customers, and is found in knowledge generally
available to one of ordinary skill in the art.” (Answer, p. 3). The motivation for
combining or modifying the teachings of the prior art to produce the claimed invention
can be derived from either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art. A person of ordinary skill in the art would
have reasonably expected that the method described by Bateholts would be useful for
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