Appeal No. 2001-2589 Page 5
Application No. 09/072,911
specification and the amended drawings (Substitute Brief, page 8), which were refused
entry by the examiner and therefore are not before us for consideration.
Further with regard to the proposed amendments, and particularly the “friction fit”
mentioned on page 8 of the Supplemental Brief, we feel obliged to point out that failure
to establish that the information sought to be added to the specification and drawings
finds support in the original disclosure raises the specter that entry would present
issues under the first paragraph of 35 U.S.C. § 112.
The Rejections Under Section 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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