Appeal No. 1997-4250
Application No. 08/405,366
appellant regarding the rejection, we make reference to the
Examiner’s Answers (Paper Nos. 7 and 10) for the reasoning in
support of the rejections, and to the appellant’s Briefs
(Paper Nos. 6 and 9), for the arguments thereagainst.
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
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
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