Appeal No. 1998-2028 Page 4
Application No. 08/365584
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).
While Konta discloses hair comprising illuminatable and nonilluminatable fibers, the
reference is silent as to there being any difference in the lengths of each type of fiber, much
less that the illuminatable fibers be of shorter length than the nonilluminatable ones. Cocca
discloses a decorative hair ornament having a plurality of illuminatable fibers of differing
lengths. However, there are no nonilluminatable fibers in the Cocca ornament. From our
perspective, therefore, one of ordinary skill in the art would not have found suggestion in
either of these references to modify the Konta hair by making the illuminatable fibers in the
mixed bunches shorter than the nonilluminatable ones. The only suggestion for this is
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