Appeal No. 2003-1915 Page 4
Application No. 09/423,232
charging electrode located in one of the pressing elements.” However, the examiner
has taken the position that it would have been obvious to add such a feature to the
apparatus of Hahne ‘651 in view of the teachings of Hahne ‘257 “in order to further
improve the locking effect between the objects of the stack.” See Paper No. 16, pages
3 and 4. The appellants argue that the electrode disclosed in Hahne ‘257 to which the
examiner refers is a non-contact electrode that is neither installed in a pressing element
nor in contact with the stack of objects, and therefore no suggestion exists to modify
Hahne ‘651 in the manner proposed.
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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