Appeal No. 98-3360 Page 3
Application No. 08/556,099
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
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 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 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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