Appeal No. 96-3202
Application No. 08/183,464
ordinary skill in the art to make the appellants' claimed
invention without undue experimentation. Additionally, with
respect to claims 1, 6 through 14, 18 and 19, the original
disclosure enabled a person of ordinary skill in the art to
make the appellants' claimed invention without undue
experimentation by the disclosure (p. 10) that the solid film
lubricant 50 may also be a metal matrix composite having about
40% graphite and the remainder aluminum or cast iron.
The obviousness issue
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references 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).
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