Ex parte SIMONUTTI et al. - Page 3




          Appeal No. 1998-3371                                                        
          Application 08/614,383                                                      



                                       OPINION                                        
                    Rather than attempt to reiterate the examiner’s full              
          commentary with regard to the above-noted rejection and the                 
          conflicting viewpoints advanced by the examiner and the appel-              
          lants with regard thereto, we make reference to the Examiner’s              
          Answer (Paper No. 13) and to the Appellants’ Brief (Paper No.               
          11) and Reply Brief (Paper No. 14).                                         
                    The test for obviousness is what the combined teach-              
          ings of the prior art would have suggested to one of ordinary               
          skill in the art.  See, for example, In re Keller, 642 F.2d                 
          413, 425, 208 USPQ 871, 881 (CCPA 1981).  In establishing a                 
          prima facie case  of obviousness, 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 inven-                 
          tion.  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 the appellant's disclo-              

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