Appeal No. 96-1597 Page 3
Application No. 08/152,523
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Briefs. As a result of our review, we have determined that the
rejection of claims 1-8 and 10-15 should not be sustained,
while the rejection of claims 9 and 16 should be sustained.
Our reasoning in support of this conclusion follows.
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. 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
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