Appeal No. 2006-2182 Page 4
Application No. 10/670,623
sling to make the cord of an elastic or stretchable material. We further agree with
the appellants that the examiner has failed to make a prima facie showing of a
motivation, teaching, or suggestion to modify the cord of Anderson to add a cover
as shown in Dalmaso.1
To make a prima facie showing of obviousness, the examiner must articulate
a “teaching, suggestion, or motivation” to modify or combine the prior art
teachings. As recently described in In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1337 (Fed. Cir. 2006),
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
In this case, the examiner’s reasoning that one of ordinary skill in the art at
the time the invention was made would have been motivated to modify the steel
wire of Anderson to make it of an elastic material so as to provide an alternative,
flexible, mechanically equivalent material for the cord based on the material’s
suitability for the intended use does not make sense in view of the purpose and
1 The appellants further argue that Anderson is non-analogous art. We find no need to reach a
decision on this issue in view of our holding of a lack of a teaching, suggestion, or motivation to
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