Appeal No. 96-3379
Application 08/248,775
disclosure of Vinai. Appellant, on the other hand, admits that
the individual elements of his system, i.e., the safety line,
rope grab, harness assembly, lanyard and lowering device, “have
been commercially available and in use in the industry for years”
(brief, page 3), but argues that it would not have been obvious
to employ both a rope grab device and a lowering device in a
single system, “to provide a fall prevention system that enables
self-rescue” (brief, page 15; original emphasis).
Under 35 USC § 103, the teachings of the references can be
combined only if there is some suggestion or incentive to make
the combination. ACS Hospital Systems, Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). While there is no requirement that the prior art contain
an express suggestion to combine, there must be some suggestion,
either from the references themselves or in the knowledge
generally available to one of ordinary skill in the art.
Motorola Inc. v. Interdigital Technology Corp., 121 F.3d 1461,
1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997).
In the present case, after fully considering the arguments
of appellant and the examiner, we conclude that the subject
matter recited in the claims on appeal would not have been
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