Appeal No. 2006-1748 Παγε 3
Application No. 10/728,375
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 1 to 8, 12, 14 and 15 under
35 U.S.C. § 103 as being unpatentable over Sutton in view of Thomas. We initially note
that the test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). Moreover, in evaluating such references it is proper to take into
account not only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The examiner’s findings in regard to the teachings of Sutton can be found on
page 2 of the non-final rejection mailed on February 8, 2005. The examiner relies on
Thomas for teaching an angled device having a constant width and concludes:
It would have been obvious to one of ordinary skill in the art, given the
teaching of Sutton in col. 2, lines 60-64, to provide a constant width to the
Sutton device as taught by Thomas et al as an obvious matter of design
choice in enhancing the strength of the prying device [non-final rejection
mailed February 8, 2005, pages 2 to 3].
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