Appeal No. 2000-1637 Page 4
Application No. 09/002,808
Cir. 1993). A prima facie case of obviousness is established by
presenting evidence that would have led one of ordinary skill in the
art 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). 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 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
so." Id.
In our view, the only suggestion for modifying Eckerlin
in the manner proposed by the examiner (answer, pp. 3-5) to
arrive at the claimed subject matter stems from hindsight
knowledge derived from the appellant's own disclosure. The
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