Appeal No. 1998-3371 Application 08/614,383 OPINION Rather than attempt to reiterate the examiner’s full commentary with regard to the above-noted rejection and the conflicting viewpoints advanced by the examiner and the appel- lants with regard thereto, we make reference to the Examiner’s Answer (Paper No. 13) and to the Appellants’ Brief (Paper No. 11) and Reply Brief (Paper No. 14). The test for obviousness is what the combined teach- ings 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 inven- tion. 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 disclo- 3Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007