Appeal No. 2003-1982 Page 3
Application No. 09/620,830
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).
Considering the rejection in view of this guidance leads us to conclude that it cannot be
sustained. Our reasons for arriving at this decision follow.
As expressed in independent claim 1, the appellants’ invention comprises the
steps of providing a cavity, placing the end of a post within the cavity and establishing a
space disposed to one side of the post, introducing a water expansible, organic fiber,
pellet material to the space to produce a fill, and introducing water to the fill to cause
expansion and consolidation of the pellet material into a water pervious cake that is
capable of firmly holding the end of the post without tamping. The examiner is of the
view that all of the subject matter recited in claim 1 is disclosed by Ferguson except for
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