Appeal No. 1999-2624 Page 6
Application No. 08/561,658
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).
While we appreciate the examiner's observation that
Crawford relies on a connection to hold the probe and tube
together and that Fugoso illustrates that the use of a heat
shrunk sleeve was known in the medical art at the time of the
appellant's invention for use in connecting items together end
to end, we are at a loss to understand why, without the
benefit of the appellant's disclosure, one of ordinary skill
in the art would have been led to modify Crawford to arrive at
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