Appeal No. 2002-1443 Page 3
Application No. 09/251,833
reasoning in support of the rejections, and to the Brief (Paper No. 20) and Reply Brief
(Paper No. 22) 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.
At the outset, we point out that 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).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007