Appeal No. 2000-0605
Application No. 08/803,779
facie case of obviousness is established where the reference
teachings would appear to be sufficient for one of ordinary
skill in the art having those teachings before him to make the
proposed combination or modification. See In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
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).
We recognize that Kobayashi teaches that the polyester
type block copolymer composition disclosed therein possesses
several desirable characteristics, such as improved
moldability, mechanical characteristics (strength, elongation
7
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