Ex parte KELLY et al. - Page 11




          Appeal No. 1997-0538                                                        
          Application No. 08/262,168                                                  


          a known gamma titanium aluminide product having the above-                  
          mentioned desired properties.  Thus, we are persuaded that                  
          appellants have not supplied sufficient evidence to carry                   
          their burden of proof.  Accordingly, we affirm the examiner’s               
          decision rejecting claims 8, 13 and 19 under 35 U.S.C. § 102                
          (a) and (e) over the disclosures of Kim and Larsen,                         
          respectively.                                                               


                               Section 103 Rejections                                 
               The examiner has rejected claims 1-4, 8, 13 and 19 under               
          35 U.S.C. § 103 as obvious over the disclosure of Kim.  Under               
          Section 103, the obviousness of an invention cannot be estab-               
          lished by combining the teachings of the cited prior art                    
          references absent some teaching, suggestion or incentive                    
          supporting the combination.  See ACS Hospital Systems, Inc. v.              
          Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933                 
          (Fed. Cir. 1984).  This does not mean that the prior art                    
          references must specifically suggest making the combination.                
          See B.F. Goodrich Co. V. Aircraft Braking Systems Corp., 72                 
          F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re               


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