Appeal No. 2000-2180 Page 3
Application No. 08/919,866
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
All three of the rejections are under 35 U.S.C. § 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 appellants’ invention provides a cutting tool or miter saw including a base
having a support surface for supporting a workpiece and a turntable supported by the base
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