Appeal No. 1998-1552
Application 08/698,982
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 17) and the Appellant’s Brief
(Paper No. 15).
OPINION
Both rejections are 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
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