Appeal No. 2000-0486
Application No. 08/853,651
knowledge generally available to one of ordinary skill in the
art which is to achieve a specific flexibility in a tip
portion for a specific player” (answer,
p. 13). In addition, the examiner finds no criticality in the
claimed tip portion inner diameter and wall thickness. Id.
It is elementary that to support an obviousness
rejection, all of the claim limitations must be taught or
suggested by the prior art applied. See In re Royka, 490 F.2d
981, 984-85, 180 USPQ 580, 582-83 (CCPA 1974)). Further, 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
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