Appeal No. 1996-1387 Page 8
Application No. 08/110,269
We find that the examiner had a sufficient reason for
combining the references. Obviousness cannot be established
by combining teachings of the prior art to produce a claimed
invention absent a suggestion supporting the combination. In
re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). The question is whether there is something in the
prior art as a whole to suggest the desirability of making the
combination. In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d
1453, 1456 (Fed. Cir. 1998); In re Beattie, 974 F.2d 1309,
1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Here, the examiner identified a proper suggestion
supporting the combination. Specifically, Naemura teaches
reducing the response time of, i.e., increasing the speed of,
an LC light shutter to less than 0.25 ms. Col. 2, ll. 49-53.
Because improving response time is desirable, the teaching
would have suggested the desirability of making the
combination.
Second, the appellant argues that improving speed is
irrelevant because his “claims do not recite speed.” (Appeal
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