Appeal No. 2006-2626
Application No. 10/315,175
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available to one having ordinary
skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If
that burden is met, the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ
143, 147 (CCPA 1976).
The examiner's position (answer, page 6) is that Keffer lacks mating
depressions and ribs. To overcome this deficiency of Keffer, the examiner turns to
Blowers for a teaching of stackable storage units having mating depressions and
ribs. Appellant’s position (brief, pages 4 and 5) is that Blowers does not teach or
suggest the mating ribs recited in claim 1, and that the pins 20 of Blowers are used
for stacking the sleeves 5 (storage units), but are external to the sleeves. It is
5
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