Appeal No. 2000-0590 Page 6
Application No. 08/019,500
similar to that of Soderberg. A one-piece guide frame (15) defines a recess within which
the chuck is slidably mounted, and an adjusting screw (45) moves the chuck and the
vertical roll mounted thereon within the recess in the guide frame. The adjusting screw is
located between the chuck and the cross-piece of the guide frame.
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 the
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).
Soderberg states that “[t]he way in which the vertical rolls 5 and 6 are rotatably
mounted in the roll chucks and the way in which the chucks are mounted in the windows of
the roll housings . . . form novel and important features of our invention” (page 2, lines 1-6).
Basic to this arrangement is that a substantial portion of the rolling mill structure is moved
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