Appeal No. 2004-2012 Page 4
Application No. 09/183,087
modify the Uni-Charm diaper by shortening the length of the inner cuffs in view of the
teachings of Lawson and Robertson “in view of the recognition” in the prior art that inner
cuffs “are inevitably longer” than outer cuffs, and to add end barrier flaps in view of the
teachings of Robertson and Daio “in view of the recognition” in the prior art that end
flaps “enable the article to more effectively contain body exudates” (Answer, page 5).
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 under 35 U.S.C. §103, 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.
Ex parte Clapp, 227 USPQ 972, 973 (BPAI 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, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Applying this guidance to the situation at hand leads us to agree with the appellants that
this rejection should not be sustained. Our reasoning follows.
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