Appeal No. 96-0852
Application 08/116,581
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellants’
specification and claims, to the applied prior art references, and to the respective positions articulated
by appellants and the examiner. As a consequence of our review, we have made the determination that
we will not sustain the examiner’s rejection of claims 1, 7 through 9, 12 and 14 through 16 on appeal.
Our reasons follow.
In determining the propriety of a rejection under 35 U.S.C. § 103, it is well settled that the
obviousness of an invention cannot be established by combining the teachings of the prior art absent
some teaching, suggestion or incentive supporting the combination. See In re Fine, 837 F.2d 1071, 5
USPQ2d 1596 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d
281, 227 USPQ 657 (Fed. Cir. 1985); ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d
1572, 221 USPQ 929 (Fed. Cir. 1984). The law followed by our court of review, and thus by this
Board, is that "[a] prima facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art."
In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). See also In re Lalu, 747
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