Appeal No. 2000-1292 Page 4
Application No. 08/739,836
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).
Diamond discloses a spray dispenser comprising a container, a propellant, a valve,
and means for atomizing a liquid material, and Reis teaches dispensing mineralized water
from a spray dispenser. We agree with the examiner that one of ordinary skill in the art
would have found it obvious to dispense mineralized water from the Diamond spray
dispenser in view of the explicit suggestion provided by Reis. However, this is where we
part company with the examiner’s rationale. The examiner points to a first statement in
Diamond that “[c]ompressed gas propellants have included carbon dioxide, nitrous oxide,
nitrogen, air etc.” (column 2, lines 34 and 35), and a second statement that the invention
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