Appeal No. 2004-0247 Page 5
Application No. 09/899,664
mounting of one to the other. Thus, it is our view that Swanson does not qualify as
analogous art under either of the Wood tests.
Moreover, even if it were concluded, arguendo, that Swanson is analogous art,
we further agree with the appellant that suggestion is lacking for combining the
teachings of the references in such a manner as to meet the terms of claim 1. 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).
Lehner discloses a snowboard binding comprising a heel loop (20) that is fixedly
attached to the baseplate by means of two spaced rivets (21) (translation, page 12) and
a calf support (2) attached to the baseplate by a single swivel axis (4) “for example . . .
a trunnion” (translation, page 11). The heel loop thus is not at all adjustable, and the
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