Appeal No. 2001-0547 Page 6
Application No. 08/689,400
dependent claims 19, 22, 23 and 26 as being anticipated by Nicholas cannot be
sustained.
The Rejections Under Section 103
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).
The first of these rejections is that independent claim 1 and dependent claims 5,
6 and 8-11 are unpatentable over Nicholas in view of Meador. The examiner is of the
view that Nicholas discloses all of the subject matter recited in claim 1 except for the
one-way valve, but that it would have been obvious to one of ordinary skill in the art to
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