Appeal No. 98-0973
Application No. 08/538,419
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). However, the mere fact that the prior
art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900, 221
USPQ 1125 (Fed. Cir. 1984). In establishing a prima facie
case of obviousness under 35 USC
§ 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
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