Appeal No. 1998-1524 Page 8
Application No. 08/355,926
must provide some teaching whereby the appellants' combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations omitted). That
is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik
GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984). In determining
obviousness/nonobviousness, an invention must be considered
"as a whole," 35 U.S.C. § 103, and claims must be considered
in their entirety. Medtronic, Inc. v. Cardiac Pacemakers,
Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983).
In this case, we agree with the appellants argument
(brief, p. 14) that there is no "reason or suggestion in any
of the references to arrive at the instant invention other
than that gleaned from the subject patent application itself."
We agree with the examiner that the teachings of APA and
Wickersheim would have suggested to one of ordinary skill in
the art at the time the invention was made to have provided
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