Appeal 2006-2179
Application 10/735,369
A. OBVIOUSNESS REJECTIONS
Under 35 U.S.C. § 103, the obviousness of an invention cannot be
established by combining the teachings of the prior art references absent
some teaching, suggestion or incentive supporting the combination.
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 cited
prior art references must specifically suggest making the combination.
B.F. Goodrich Co. V. Aircraft Braking Systems Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401,
1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for
obviousness is what the combined teachings of the prior art references would
have suggested to those of ordinary skill in the art. In re Young, 927 F.2d
588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In evaluating the prior art
references for a suggestion, it is proper to take into account not only the
specific teachings of the references, but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In the rejecting the claims on appeal under 35 U.S.C. § 103, the
Examiner has correctly found at pages 2 and 3 of the Answer that Ackerman
‘633 and Subramanian individually teach a method of protecting combustion
gas turbine engine components made of, inter alia, a nickel-base superalloy,
wherein the components are coated with an aluminum-containing bond coat
or a diffusion aluminide prior to forming thermal barrier layers thereon. See
Subramanian, column 4, lines 6-36, and Ackerman ‘633, page 1, paragraph
0007 and page 2, paragraphs 0023 and 0025. The thermal barrier layers are
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