Appeal No. 2001-0058 Page 4
Application No. 281,815
produce a fireball having wavelengths comparable to the radiation emitted by the vehicle
propulsion means.
As we understand the examiner’s rejection, it is that Lager discloses the basic steps of the
method, that the missing features are taught by Geeraert, Griffin, Sargent and McKinnon,
and that it would have been obvious to one of ordinary skill in the art to combine the
teachings of the five references in such a manner as to render the claimed method
obvious. The appellant disputes this conclusion, pointing out a number of reasons why he
believes there would have been no suggestion to combine the references in the manner
proposed by the examiner.
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.
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