Appeal No. 1998-2551 Page 15
Application No. 08/787,624
Altman. The appellant has not provided any argument as to why
the rejection under 35 U.S.C.
§ 103 before us in this appeal based upon the combined
teachings of Hong, Altman and Eschenbach is in error.
Second, it is our view that the examiner's rejection of
claim 48 is not based on hindsight knowledge derived from the
appellant's own disclosure but from the teachings of the
applied prior art to one of ordinary skill in the art. We
note that while there must be some teaching, reason,
suggestion, or motivation to combine existing elements to
produce the claimed device, it is not necessary that the cited
references or prior 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 appellants would apparently have
us believe. Rather, as set forth previously the test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art.
Additionally, we observe that an artisan must be presumed to
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007