Appeal No. 2000-0852 Page 7
Application No. 09/061,314
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).
The first of these rejections is that independent claims 1, 9 and 15, and dependent
claims 11-13 and 16 are unpatentable over the combined teachings of Griffin and Liao.
Griffin discloses a baseball batting tee comprising a self-righting target support having a
rounded bottom and terminating at its upper end in a helical coil spring upon which a ball is
placed. The purpose of the device is to allow young children to learn to hit a ball without
having it pitched to them, and the ball flies off of the tee after being struck by a bat and can
be provided with a tether to facilitate returning it to the tee (column 1, lines 6-39). The self-
righting capability is provided “especially” for “a bad batting hit” (column 1, lines 44-52),
which would imply a hit wholly or partially upon the tee spring (16) or post (14) rather than
the ball. The intended “target” in Griffin clearly is the baseball on the tee, and thus the
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