Ex parte NADEL et al. - Page 4

              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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