Appeal No. 2000-2093 Page 8
Application No. 08/730,385
Method claims 5 and 9 and apparatus claims 14-16 stand rejected as being
unpatentable over Shendon.
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).
While we concluded above with regard to apparatus claim 13 that all of the subject
matter therein recited is disclosed or taught by Shendon, there is no evidence upon which
to base a conclusion that the same is true with regard to the method of claim 5, or that this
method would have been obvious in view of Shendon. Claim 5 recites a number of
operating parameters which the examiner apparently has concluded are not disclosed or
taught by Shendon, for he has taken the position that they are merely matters of design
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