Appeal No. 1999-1168 Page 3
Application No. 08/876,191
reviewing court. As a consequence of our review, we make the determinations which
follow.
At the outset, we note for the record that the test for obviousness is what the
combined teachings 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 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, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
As manifested in the claims before us, the appellant’s invention focuses upon the
mechanism by which a handle assembly for a socket drive head is attachable to the drive
head. There is no dispute that Sharp discloses the basic components recited in the
appellant’s independent claim 19, to wit, a socket drive head comprising a palm ratchet
having a drive extending from its lower flat wall and a bore formed in the side wall, and an
elongated handle capable of being removably installed in the bore. However, Sharp does
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