Appeal No. 2003-0666 Page 5
Application No. 08/891,351
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).
Claims 1 and 4 stand unpatentable over Wise in view of AAPA. As we
understand this rejection, it is the examiner’s view that Wise discloses all of the subject
matter recited in claim 1 except for the “thermoplastic bell[s],” but it would have been
obvious to replace the bells disclosed by Wise with thermoplastic bells in view of the
AAPA, that is, the appellant’s admission in his specification that such bells were known
in the art at the time of the invention. According to the examiner, “[i]t would have been
prima facie obvious to employ this modern day fitting scheme in the 1909 disclosure of
Wise. The fittings set forth supra are capable of being used as set forth in the last two
lines [of] claim 1" (Answer, page 2).
Wise is not concerned with providing fittings that will allow a bathtub drain
system to be assembled in two different configurations. Wise discloses an indirect
bathtub drainage system comprising a tee fitting 16 equipped with three compression
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