Appeal No. 97-1017
Application No. 08/391,421
The rejections are explained in the Supplemental
Examiner’s Answer (Paper No. 17).
The appellants’ arguments in response to the positions
taken by the examiner can be found in the Briefs (Papers Nos.
11, 16 and 18).
OPINION
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
2(...continued)
the Supplemental Examiner’s Answer (Paper No. 17).
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