Appeal No. 1999-2100
Application No. 08/850,825
OPINION
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 17) and to the Appellant’s Brief
(Paper No. 16).
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
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
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