Appeal No. 1999-1061 Page 3
Application No. 08/568,337
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, the applied prior art references, the respective
positions articulated by the appellants and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
All 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).
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