Appeal No. 2002-0346 Page 3
Application No. 08/952,673
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the Answer
(Paper No. 21) for the examiner's complete reasoning in support of the rejection, and to
the Brief (Paper No. 20) and Reply Brief (Paper No. 22) for the appellants’ arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
It is the examiner’s position that the subject matter recited in claim 1, the sole
independent claim before us, would have been obvious1 in view of the teachings of
Hommen. The appellants argue in rebuttal that Hommen fails to disclose or teach a
back-up braking circuit which provides a pressure that varies in accordance with braking
demand as initiated by a driver, and therefore does not render claim 1 obvious.
1The 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).
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