Appeal No. 1999-2130 Page 3
Application No. 08/813,307
OPINION
Rather than attempt to reiterate the details of the
explanation of the rejection and the opposing viewpoints of the
examiner and the appellant, we refer to the Examiner’s Answer
(Paper No. 9) and the Brief (Paper No. 8).
The rejection before us is under 35 U.S.C. § 103. 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. See, for example,
Uniroyal, Inc. V. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007