Appeal No. 97-1595
Application No. 08/209,786
The claims stand rejected as being unpatentable over
Friswell in view of Bowser. 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).
Friswell discloses a system for evaporating liquid from a
chemical sample. It comprises a heated processing station
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