Appeal No. 2002-1874 Page 3
Application No. 09/553,302
The examiner’s rejection is that the claimed subject matter would have been
obvious to one of ordinary skill in the art in view of the teachings of Mair and Marshall.
In particular, it is the examiner’s view that all of the subject matter recited in
independent claims 5, 15 and 18 is disclosed or taught by Mair except for the details of
the vent valve. However, the examiner takes the position that it would have been
obvious to modify the Mair storage tank by utilizing the valve disclosed by Marshall “in
order to provide vent control of the gas pressure within the tank 17 of Mair” (Answer,
page 4).
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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