Appeal No. 2003-2056 Page 4
Application No. 09/377,442
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 appellants' 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 to the situation at hand leads us to
conclude that the rejection of claim 1 cannot be sustained. Our reasoning follows.
Like the appellants' invention, Esposto is directed to a radiator for spacecraft
applications. While Esposto discloses a pair of radiator panels flanking an
interconnecting panel, it fails to disclose or teach that the heat pipe matrixes positioned
on the radiator panels are disposed between outer and inner faceskins, a shortcoming
admitted by the examiner on page 4 of the Answer. The appellants further point out
that Esposto does not disclose that the heat pipes are arranged in a matrix, with which
we also agree. The examiner takes the position that it would have been obvious to one
of ordinary skill in the art to modify the Esposto structure by placing the radiator panels
between outer and inner faceskins in view of the teaching of Miyasaka “for the purpose
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