Appeal No. 1998-2035
Application 08/458,783
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). The conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re Lintner,
458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). When it
is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is
any suggestion or motivation in the prior art to
make the selection made by the appellants. Obviousness cannot
be established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
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