Appeal No. 1998-0318 Page 7
Application No. 08/539,466
The Rejections 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 appellants’ 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).
Independent claim 23 stands rejected as being unpatentable over Hulette in view of
Charlton and Cole-Parmer. It is the examiner’s view that Hulette discloses all of the subject
matter recited in the claim except for the shape of the tube, but that such is taught by
Charlton and Cole-Parmer, and it would have been obvious to one of ordinary
skill in the art to replace the sampling tube of Hulette with one meeting the terms of claim
23 in view of the teachings of the two secondary references.3 We do not agree.
3Although expressed in the rejection as Hulette in view of Charlton and Cole-
(continued...)
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