Appeal No. 1999-0700 Page 8
Application No. 08/590,580
to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-
78 (CCPA 1967). Moreover, 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).
Turning first to the examiner's rejection of claims 1-4, 6-8 and 10-23 under 35 U.S.C.
§ 103 as being unpatentable over Kok, the examiner's only explanation as to why the subject
matter of claims 1-4, 6-8 and 10-23 would have been obvious is
[i]n any event, the teaching of Kok would clearly render the claim language
obvious, if in fact it is determined not to be fully met [answer, page 5].
For the reasons discussed above, the examiner's basis for concluding that the subject matter of
these claims is anticipated by Kok is tainted by the examiner's unreasonably broad interpretation of the
language "recycled fiber sludge" as used in the claims. In failing to provide any reason why one of
ordinary skill in the art would have been led to modify the Kok process by using "recycled fiber sludge"
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