Appeal No. 2000-1444 Page 4
Application No. 09/040,245
claimed method would have been obvious to one of ordinary skill in the art (Answer, page
4). The appellant argues that neither of the references is even concerned with the problem
to which his invention is directed, and that even if the teachings of the two references were
combined, the result would not be the claimed method (Brief, pages 7-10).
We begin our analysis by pointing out that 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).
Green discloses a holding tank for human wastes (Figure 1), and hospital wastes
such as from an operating room, including “sharps” (Figures 5 and 6). The embodiment
shown in Figure 1, which is configured to serve as a toilet for an individual, would appear
to be capable of being utilized to accomplish all of the steps recited in claim 1. However,
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