Appeal No. 1998-0566
Application No. 08/396,005
view.” Clearly, this is not the case in the Kanzelberger
device, for the back surface of plastic plate 24 is bonded to
the front surface of metal plate 22, and thus is hidden from
view in the assembled device. We are not persuaded otherwise
by the examiner’s assertion that the exploded view in the
patent drawings is sufficient to teach this feature of the
appellant’s claimed structure.
The rejection of claim 1 and of claim 4, which depends
from claim 1, is not sustained.
The Rejections Under 35 U.S.C. § 103
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
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