Appeal No. 2002-1063 Page 3
Application No. 09/306,552
to the Brief (Paper No. 14) and Reply Brief (Paper No. 16) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
All of the rejections are under 35 U.S.C. § 103(a). 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).
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