Appeal No. 1999-2220 Page 6
Application No. 08/662,930
even if one were to agree, arguendo, that such constitutes
“processing.”
The Section 102 rejection of independent claim 1 is not
sustained. On the basis of the same reasoning, we also will
not sustain the Section 102 rejection of independent claim 29,
which contains the same limitations. It further follows that
the rejection of the claims that depend from claims 1 and 29
also will not be sustained.
The Rejection 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
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