Ex parte CASTEEL et al. - Page 4




          Appeal No. 1997-0074                                                        
          Application No. 08/123,092                                                  


          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 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825                 
          (1988).                                                                     
               All three of the appellants' independent claims are                    
          directed to a method of manufacturing an article having an                  
          integral handle.  Claim 1 is representative, setting forth the              
          invention as comprising the following steps:                                
               providing a structural substrate that has a handle                     
               hole of sufficient size to provide a space for                         
               gripping a handle that spans the hole,                                 


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