Appeal No. 98-0059
Application No. 08/540,548
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 In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, 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). The appellant’s
invention provides that a plurality of flashing cards be
attached together into a flashing strip. The flashing cards
overlap with one another, and are attached together by, in the
language of claim 1,
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