Appeal No. 1999-1051 Page 3
Application No. 08/652,740
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
All of the rejections are 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 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).
The appellant’s invention is directed to an improvement in apparatus for generating
a spark for igniting devices such as gas appliances. It is pointed out in the specification
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