Appeal No. 1999-1987 Page 11
Application No. 08/400,129
art specifically suggest making the combination (see B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1583, 37 USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as
the appellant would apparently have us believe. Rather, as
set forth above, the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus, this
argument by the appellant is not persuasive that any error in
the determination regarding the obviousness of claim 1 has
occurred. As long as some motivation or suggestion to combine
the references is provided by the prior art taken as a whole,
the law does not require that the references be combined for
the reasons contemplated by the inventor. See In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en
banc), cert. denied, 500 U.S. 904 (1991) and In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
In this case, we have concluded that for the reasons set forth
above, the combined teachings of Alexander and Albert do
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