Appeal No. 97-0149
Application 08/308,711
35 U.S.C. § 103.
Considering first the rejection of claims 1 and 2 under
35 U.S.C. § 103 as being unpatentable over Ellis in view of
Mori, Perlmutter and Vinck, the appellant in argument notes
the deficiencies of the references individually and urges
there is no suggestion to combine the teachings of the
references in the manner proposed by the examiner. According
to the appellant, the examiner has selected isolated teachings
from the various references and has impermissibly relied upon
the appellant’s own teachings for a suggestion to combine.
We are unpersuaded by the appellant's arguments. While
there must be some teaching, reason, suggestion, or motivation
to combine existing elements to produce the claimed device
(see ACS Hospital Systems, Inc. v. Montefiore Hospital, 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), it not
necessary that the cited references or prior art 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) and In re Nilssen, 851 F.2d 1401, 1403,
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