Ex parte SHINMOTO - Page 4




             Appeal No. 1998-1735                                                               Page 4                
             Application No. 08/339,980                                                                               




                                       The Rejections 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, 1051, 5 USPQ2d 1434, 1438  (Fed. Cir.), cert. denied, 488 U.S.                            
             825 (1988).                                                                                              
                    The appellant’s invention is directed to an improvement in plastic molding machines               
             of the type wherein a thermoplastic resin is melted while being transported by a screw                   
             conveyor and then is extruded through a die into a forming chamber.  Such a machine is                   
             shown in Figure 3 of the present application.  When the plastic product emerges from the                 











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