Appeal No. 2002-0937 Page 6
Application No. 09/301,985
modification of Ihara the examiner is proposing to arrive at the claimed invention and
where suggestion is found for such modification.
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, e.g., Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
For the reasons discussed above, we conclude that the examiner has failed to
adduce the necessary evidence or explanation to establish a prima facie case of
obviousness of the subject matter of claim 1. Accordingly, we shall not sustain the
rejection of claim 1 or claims 2-5 which depend therefrom.
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