Appeal No. 1999-0515 Page 8
Application No. 08/620,256
The Rejection Under 35 U.S.C. § 103
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, 1439 (Fed. Cir.), cert. denied, 488
U.S. 825 (1988).
It is the examiner’s position that Nowak teaches the
concept of providing a spindle on a ball, and that it would
have been obvious to provide the Nowak ball with the surface
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