Appeal No. 95-0942
Application 07/877,772
modification is suggested by Lindsey "in order to properly affix
the tape and ensure a firm seal against the pipe," and the second
would have been "obvious for one of average skill in the art"
from Koopman (Answer, page 4).
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 In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness
under 35 U.S.C. § 103, 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 (BPAI 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).
Like the appellants, our quarrel with the examiner's
position begins with the primary reference, Tailor. Basic to the
Tailor invention is the use of a plurality of cover sheets which
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