Appeal No. 1998-0810 Page 3
Application No. 08/537,966
reviewing court. As a consequence of our review, we make the determinations which
follow.
The rejection is 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).
It is the examiner’s view that all of the subject matter recited in the claims is
disclosed by Sawyer ‘206 except for the specific means to control the melt temperature of
the neck through which molten metal flows from the mechanism. Although not so
explained, it appears to be the examiner’s position that the claimed control means is
taught by Sawyer ‘566, and it would have been obvious to one of ordinary skill in the art to
modify Sawyer ‘206 by installing the control system of Sawyer ‘566 “in order to more
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