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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