Appeal No. 1999-2727
Application No. 08/809,315
particular rubber and textiles, recited in appellant’s claims
as abrasive and suitable for use in an adhesive grit layer
with adhesive as taught by Spratt. Thus, it is not apparent
to us why one of ordinary skill in the art would have been
motivated, in the absence of appellant’s disclosure, to
provide grains of all seven materials recited in appellant’s
claims in combination in the abrasive grit layer of Spratt.
The examiner (answer, page 4) has also asserted that
appellant has not demonstrated that the particular combination
of materials recited by appellant yields unexpected results.
While this is true, we also observe that the test of
obviousness is not whether appellant’s invention yields
unexpected results. Rather, the test for obviousness is what
the combined teachings of the references would have suggested
to one of ordinary skill in the art. See In re Young, 927
F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Indeed, a prima facie case of obviousness is established where
the reference teachings would appear to be sufficient for one
of ordinary skill in the art having those teachings before him
to make the proposed combination or modification. See In re
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