Appeal No. 2002-2033 Page 5
Application No. 08/894,063
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).
Applying this guidance of our reviewing court leads us to conclude that the rejection
should not stand. Our reasons follow.
Stolarczyk discloses a torque transfer device having a male element comprising
six inner wall segments evenly disposed about a center axis and six splines projecting
outwardly between adjacent pairs of wall segments, and a corresponding female
element.2 The principal objective of the Stolarczyk invention is to provide an improved
torque transfer arrangement for headed fasteners and torque tools. With reference to
2Although the Stolarcyzk Abstract states that there is an embodiment having only four sides, it is
not described in the specification or shown in the drawings. The examiner has not made reference to this
statement, but has formulated the rejection on the basis that the reference does not disclose or teach the
number of elements recited in claim 34.
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