Appeal No. 1999-2126 Page 4
Application No. 08/857,938
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).
The appellants’ invention is directed to a liquid filter
having a pressure regulator that permits liquid flow from the
clean side of the filter to exit through a return line if the
operating pressure of the regulator is exceeded. The examiner
has rejected independent claim 19 on the basis of three
alternative rejections, all of which employ the basic
combination of Robinson ‘241 and Robinson ‘203. According to
the examiner, Robinson ‘241 discloses all of the subject matter
recited in claim 19 except for the particular pressure
regulator recited and the double walled inlet tube. However,
it is the examiner’s position that one of ordinary skill in the
art would have found it obvious to modify Robinson ‘241 first
by replacing the disclosed pressure regulator with the one
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