Appeal No. 2000-1465 Page 4
Application No. 09/037,485
Bergin strainer assembly to include such an element in view of the teachings of Mowery “in
order to facilitate assembly and replacement” (Answer, page 4), whereupon conformance
would be achieved with the subject matter recited in the claim. Among the appellant’s
arguments in rebuttal is that Mowery does not disclose or teach that the attachment
bushing have the internal and external threads positioned directly opposite each other on
inner and outer surfaces thereof, and therefore the references do not render the claim
obvious.
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).
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