Ex parte HALLENSTVEDT - Page 3




          Appeal No. 99-0214                                         Page 3           
          Application No. 08/372,126                                                  


          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 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 the appellant's disclosure.  See,             
          for example, Uniroyal, Inc. V. Rudkin-Wiley Corp., 837 F.2d                 
          1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488              
          U.S. 825 (1988).                                                            
               The appellant’s invention is directed to a seat for an                 
          elastic sealing ring of the type used to seal around a rotating             
          shaft.  The invention provides an annular groove into which a               
          portion of the elastic seal (a bead) is displaced when the seal             
          is pressed into position.  From the description in the                      
          specification, there appear to be five features of the                      








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