Appeal No. 1999-0082
Application No. 08/655,022
It is the examiner’s view that all of the subject matter
recited in claim 9 is disclosed by Yuichi except for the
projections and spacing of the inner and outer flat faces,
which are taught by Ohmi, and that it would have been obvious
to one of ordinary skill in the art to incorporate these
features of Ohmi into the Yuichi regulator structure. We
disagree, sharing the appellants’ opinion that Ohmi does not
disclose or teach the projections and the spacing of the inner
and outer flat faces. Our reasons for arriving at this
conclusion follow.
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
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