Appeal No. 2000-1071 Page 3
Application No. 08/851,381
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The rejections are under 35 U.S.C. § 103. 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 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 appellants’ claims are directed to a method of forming a tampon intended for
digital insertion, as opposed to insertion by means of an applicator. As manifested in
independent claim 31, the invention comprises the steps of rolling a length of compressible
absorbent material into a rolled layered pledget, displacing radially central layers of the
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