Appeal No. 97-1840 Page 17
Application No. 08/316,685
teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, supra. 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. Here, the prior art contains none. Instead, it
appears to us that the examiner relied on impermissible
hindsight in reaching her obviousness determination. Since
the cut-away limitation as recited in claims 5 through 8, 12
and 17 is not taught or suggested by the applied prior art,
the decision of the examiner to reject claims 5 through 8, 12
and 17 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 20 under 35 U.S.C. § 112, second paragraph,
is reversed; the decision of the examiner to reject claims 1
through 4, 9 through 11, 13 through 16 and 19 under 35 U.S.C.
§ 102(b) is affirmed; the decision of the examiner to reject
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