Ex parte SCHONHOFF et al. - Page 3




          Appeal No. 97-4212                                                          
          Application No. 08/630,031                                                  

          examiner and the appellants as set forth in the Answer and the              
          Brief.  As a result of our review, we have determined that the              
          rejection should not be sustained.  Our reasoning in support                
          of this conclusion follows.                                                 
               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, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837                 
          F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.                     
          denied, 488 U.S. 825 (1988).                                                


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