Appeal No. 2000-0574
Application No. 08/876,321
Covington for a suggestion to make the domed top 17 of
Boughner's cover 15 planar does not make up for the deficiency
of Boughner discussed above.
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).
From our perspective, the only suggestion for modifying the
casket of Boughner to make the lid large enough to contain the
base member and end walls when in a stacked unassembled
condition, as required by claim 1, is found in the luxury of
hindsight accorded one who first viewed the appellant's
disclosure. This, of course, is not a proper basis for a
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