Appeal No. 1998-1928 Page 13
Application No. 08/543,153
Claims 8 and 9
The examiner found (answer, p. 4) that
Storms does not disclose that the ring member and seal
body have inclined surfaces. Johnson, however, discloses
a similar seal having inclined surfaces, as shown in
figure 6.
The examiner then determined (answer, p. 4) that
[i]t would have been obvious to modify Storms, by making
the surfaces inclined, as taught by Johnson, thereby
limiting relative movement between the ring member and
seal body.
The appellant argues (brief, p. 8) that the applied prior
art does not suggest the claimed subject matter. We agree.
As set forth above, obviousness is tested by "what the
combined teachings of the references would have suggested to
those of ordinary skill in the art." But it "cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
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