Appeal No. 2001-1275 Page 4
Application No. 09/128,120
rejection regarding the matter of where one of ordinary skill in the art would have found
suggestion to combine the references in the manner proposed, and this is not supplied by
comments elsewhere on the record. If it is the examiner’s view that the friction-reducing
elements disclosed in each of the three applied references are equivalents and therefore
can be used interchangeably, he has not so stated, nor has he provided evidence from2
which to conclude that one of ordinary skill in the art would have considered this to be the
case.
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.
2The examiner has stated on page 4 of the Answer that he considers the friction reducing
“approaches” of Baker and Fiedler to be alternatives, but in the statement of the rejection (Paper No. 7,
page 2, line 3) has said only that it would have been obvious to “add” these teachings to some unspecified
structure, presumably that of the German reference.
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