Appeal No. 1997-3797 Page 5
Application No. 08/121,820
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a case of obviousness with respect
to the claims under appeal. Accordingly, we will not sustain
the examiner's rejection of claims 25 to 41 under 35 U.S.C. §
103. Our reasoning for this determination follows.
The appellants argue that the applied prior art does not
suggest the claimed subject matter. We agree.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). 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
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