Appeal No. 96-0948 Page 10
Application No. 08/262,400
optical components of the Sud system, whether movable or
immovable, must be attached in some way to an “optical bench”
in order for the device to be functional.
The Section 102 rejection of claims 24 and 25 is
affirmed.
The Rejection Under 35 U.S.C. § 103
It is axiomatic that 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, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, 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,
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