Appeal No. 1999-0256 Page 4
Application No. 08/828,616
entire time that this long curing process takes, but can be
removed as soon as the user is satisfied that a correct
impression has been made.
It is the examiner’s position that the subject matter
recited in the claims would have been obvious in view of the
combined teachings of Lyden and Bradley. We do not agree. 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
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure. See,
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