Ex parte BOICHOT et al. - Page 6

          Appeal No. 1999-1054                                       Page 6           
          Application No. 08/889,594                                                  

          that Karnopp discloses all of the subject matter recited in                 
          claim 2 except for the control system, which is taught by                   
          Renault, and that it would have been obvious to have provided               
          the Karnopp system with “the improved control of Renault”                   
          (Answer, page 4).  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 appellants’                   
          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).                                          

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