Appeal No. 2000-1664
Application No. 09/114,790
inconceivable that one of ordinary skill in the art given the
teachings of McAllister would not be able to practice
appellants’ claimed invention.
The test for obviousness is not whether one of ordinary
skill in the art could or would be able to practice the claimed
invention given the teachings of the prior art. 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 In
re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness under 35 U.S.C.§
103, 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. 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 e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp. 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied,
488 U.S. 825 (1988).
It is our conclusion that the Examiner has failed to
establish a prima facie case of obviousness in regard to claims
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