Appeal No. 2002-0072 Page 6
Application No. 08/956,912
Claim 3 stands rejected as being obvious in view of the combined teachings of
Kobler and Odeau, the latter being cited for its teaching of using a headstop to impede
the forward motion of at least one of the signatures.
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 it would have been obvious to modify the Kobler
apparatus by replacing the disclosed belt delay mechanism with a headstop delay
mechanism, as shown in Odeau. We do not agree. The examiner has not set forth any
reason why one of ordinary skill in the art would have been motivated to substitute the
Odeau headstop for the belt system of Kobler, and we fail to perceive any teaching,
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