Appeal No. 2004-1023 Page 5
Application No. 09/393,714
taught in the reference. This being the case, the subject matter of claim 18 is not
anticipated by Williams, and we will not sustain this rejection.
The Rejection Under Section 103
Claims 20-26, which depend from claim 18, stand rejected as being obvious3 in
view of the combined teachings of Williams and either of Hermann and Siemens. In this
rejection the examiner takes the position that all of the subject matter recited in these
claims is disclosed or taught by Williams except for injecting the modulated fuel in the
two fuel lines in an anti-symmetric fashion. However, it is the examiner’s view that to
modify the Williams system to perform in this manner would have been obvious to one
of ordinary skill in the art in view of the teachings of Hermann “in order to actively
suppress the combustion oscillations” as taught by both Hermann and Williams (Paper
No. 30, sentence bridging pages 3 and 4).
Be that as it may, evaluating Williams in the light of Section 103 does not cause
us to alter the position we voiced above that Williams fails to disclose or teach the final
step of the method recited in parent claim 18. This shortcoming is not, in our opinion,
3The 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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