Appeal No. 1999-1170 Page 5
Application No. 08/801,872
frictionally engages the other. The appellant disputes the conclusions reached by the
examiner, arguing that the coupling of Figure 3 does not teach radially loading the
elastomer, a feature that is set forth in claim 1.
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 rejection of claim 1 has several fatal deficiencies. First, we agree with the
appellant that there is no evidence supporting the examiner’s conclusion that even though
not shown in prior art Figure 3 or admitted by the appellant, the elastomer member 33"
experiences some degree of precompression when the adjacent plates 35" are drawn
toward each other via the tightening bolts (Answer, page 7). In this regard, because in the
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