Ex parte HALE - Page 8




          Appeal No. 96-1604                                                          
          Application 08/272,906                                                      


          it is incumbent upon the examiner to provide a reason why one of            
          ordinary skill in the art would have been led to modify a prior             
          art reference or to combine reference teachings to arrive at the            
          claimed invention.  See Ex parte Clapp, 227 USPQ 972, 973 (Bd.              
          Pat. App. & Int. 1985).  To this end, the requisite motivation              
          must stem from some teaching, suggestion or inference in the                
          prior art as a whole or from the knowledge generally available to           
          one of ordinary skill in the art and not from appellant's                   
          disclosure.  See, for example, Uniroyal, Inc. v. Rudkin-Wiley               
          Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988),           
          cert. denied, 488 U.S. 825 (1988).                                          
               It is our opinion that nothing in the teachings of the                 
          applied prior art or the knowledge generally available to one of            
          ordinary skill in the art would have led such person of ordinary            
          skill in the art to modify the fiberboard hogshead of Sproull to            
          include the H-shaped connector of Hancock or the downwardly (or             
          upwardly) extending skirt portions for the end closures of Sherk.           
          In particular, although Hancock does disclose a removable                   
          H-shaped connector for connecting panels of a container, it is              
          not apparent that such a connection would provide the necessary             




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