Appeal No. 2000-1998 Page 5
Application No. 08/828,523
[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made
that the threaded post as taught by Halstrom could be
incorporated into the [Kelly] device in order to be
able to remove the upper arch from the lower arch
[final rejection, page 2].
We are compelled to point out, at the outset, that the test
for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Obviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention,
absent some teaching or suggestion to do so. The mere fact that
the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
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). In this instance, the examiner has not
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