Appeal No. 1998-1258 Page 4
Application No. 08/442,676
with a minimum of waste,” and to “use the method of forcing powder out of a source by
means of pressurized nitrogen as taught by ULVELING ET AL . . . in order to push the
powdered material into the compartments of BOYHAN in a rapid and controllable manner”
(Answer, page 5). The appellants take issue with this theory, primarily on the basis that
neither reference teaches the use of a porous member in conjunction with the disclosed
methods and, even if such were the case, no suggestion exists to combine the teachings
of the references in the manner proposed by the examiner.
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, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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