Appeal No. 98-0395 Page 4
Application No. 08/333503
mold cavity. Therefore, explicit support for the disputed term is not present. However,
from our perspective, one of ordinary skill in the art would have understood from the
specification that "rigid" parts not only typically are used in mold components, but probably
would have been the first to come to mind. This is buttressed by the statements from
Molbert to which the appellant has referred.
We therefore will not sustain the rejection of claim 6.
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 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).
Independent claim 1 is directed to operating an injection molding machine to
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