Ex parte UNGER et al. - Page 6

          Appeal No. 1998-1805                                                        
          Application No. 08/596,734                                                  

          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 appellants’ 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                   
               The appellants’ invention relates to a device for                      
          impregnating a moving web with a medium under pressure in a                 
          manner that is an improvement over the prior art devices.   As              
          manifested in claim 1, the invention comprises a chamber                    
          defined on the top by the surface of a roller rotatable about               
          a horizontal axis and at the bottom by a trough.  The chamber               
          has an inlet and an outlet, each of which is equipped with                  


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