Appeal No. 1998-2794 Page 6
Application No. 08/506,137
desirability of the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432
(Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
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, e.g., Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988). In this case, it appears that the only motivation for constructing the absorbent article of
Foreman such that the barrier cuff is less extensible than the topsheet to meet the limitations of
appellant's claims stems from hindsight knowledge derived from the appellant's own disclosure. It
follows that we also cannot sustain the examiner's rejection of claims 1-3 and 5-12 under 35
U.S.C. § 103.
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