Appeal No. 97-0454
Application No. 08/089,375
OPINION
The Rejection Under Section 103
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 (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, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Independent claim 5 is directed to a self-restraining
necktie which comprises, inter alia, a vertical member attached
to the rear of the outwardly facing section (the front) of the
tie and a horizontal member having a buttonhole therein slidably
secured to the vertical member. The claim requires that the
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