Appeal No. 2000-1715 Page 4
Application No. 08/925,053
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 appellants’ 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).
Drewe discloses a syringe comprising a plurality of bellows rings that are arranged so
that their diameters successively decrease from the rearward to the forward portions of the
syringe, which is the opposite of the requirements of the appellants’ claim 13. The Drewe
syringe has two liquid-holding sections 11 and a third independently collapsible and
expandable section 12, and teaches that the force necessary to collapse section 12 is less
than that to collapse sections 11. The purpose of this construction is to permit the syringe
to accomplish an “aspiration test” after insertion of the needle and prior to injection of the
medication in sections 11 (column 3, line 48 et seq.).
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