Appeal No. 96-3225
Application 08/229,322
lights or the like, in the same manner as the appellant’s
invention.
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 (Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985)) and that the requisite
motivation 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, 1052
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988)). In the
present case, it is the examiner’s opinion that the required
suggestion is found in the fact that Palmquist “recognizes
that the product of its method facilitates retroreflection of
colored light rays” (Answer, page 6). However, the examiner
has not articulated a reason why the artisan would have been
motivated to change the Danish method so that a product having
different operating characteristics would result. And, even
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