Appeal No. 2000-0491 Page 4
Application No. 08/906,855
that the “single” steps do not form a part of the inventive method, but are intended to put the
results of it in a particular perspective.
The rejection under Section 112 is not sustained.
The Rejection Under Section 103
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).
The examiner has rejected all of the claims as being unpatentable over Jin,
admitting, however, that Jin fails to disclose, among other things, that the wire-drawing and
heat-treating steps are repeated more than two times. The examiner takes the position
that this limitation would have been obvious to one of ordinary skill in the art in view of the
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