Appeal No. 2006-0583
Application No. 10/322,008
Finally, it is the appellants’ position that no reason exists for combining the admitted
prior art with Farr in the manner proposed by the examiner. We cannot agree. An artisan
would have so-combined these prior art teachings in order to provide the admitted prior art with
the advantages taught by Farr to attend use of preformed insulation (e.g., see lines 15-22 in
column 1 of Farr). We also disagree with the appellants’ related contention that patentee’s
disclosure of an airspace (see lines 14-18 in column 2) would have “motivated away from
seeking the teaching of Farr” (brief, page 13). The mere possibility of airspace in Farr has no
apparent relevance to the admitted prior art. In this regard, we remind the appellants that the
test for obviousness is what the combined teachings of the prior art would have suggested to
those of ordinary skill and that one cannot show nonobviousness by attacking references
individually where rejections are based on combinations of references. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881-82 (CCPA 1981).
Under the circumstances recounted above, it is our determination that the prior art
applied by the examiner establishes a prima facie case of obviousness which the appellants
have failed to successfully rebut with argument or evidence of nonobviousness. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We hereby sustain,
therefore, the § 103 rejection based on the admitted prior art and the Farr reference of argued
independent claim 24 and of non-argued dependent claims 25-28, 30, 31, and 46.
For analogous reasons, we also hereby sustain the § 103 rejection based on the
admitted prior art, Farr and Mocker of claims 32-34. Contrary to the appellants’ argument,
Mocker is analogous prior art because it is reasonably pertinent to the appellants’ problem
relating to the manufacture of performed insulation. See In re Clay, 966 F.2d at 658,
23 USPQ2d at 1060. Furthermore, again contrary to the appellants’ argument, an artisan
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