Appeal No. 98-1554 Page 4
Application No. 08/586,894
sustain either of the rejections. Our reasons for this
decision follow.
Both of the rejections are on the basis of obviousness
under 35 U.S.C. § 103, for which the test 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
(BPAI 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, 1052 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
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