Appeal No. 1996-2802 Page 4
Application No. 08/140,142
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 USPQ2d 1434, 1439 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
As manifested in independent claim 1, the inventive
method is directed to making compressed fuel pellets and
comprises the steps of severing a wafer off an elongate piece
of wood against the grain, splitting out a portion of the wafer
along the grain while maintaining the portion within the wafer,
confining the portion in a direction generally perpendicular to
the grain, and compressing the confined portion along the
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