Appeal No. 2002-1228 Page 3
Application No. 09/124,831
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
Both 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).
The first of the rejections is that claims 1, 3, 7, 10, 18, 19 and 22 are
unpatentable over White in view of AAPA. It is the examiner’s view that the method
steps recited in these claims are disclosed in White, which is directed to joining together
under water a pair of flanged pipe sections, but it would have been obvious to one of
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