Appeal No. 97-2642 Page 16
Application No. 08/094,461
invention utilizes a pressure drop across the restrictor 82
to heat the oil, this teaching of a preferred embodiment
does not constitute a teaching away. See In re Susi, 440 F.2d
442, 169 USPQ 423 (CCPA 1971) and In re Dunn, 349 F.2d 433,
146 USPQ 479 (CCPA 1965).
On pages 13-21 of the brief and pages 3-4 of the reply
brief, the appellant argues that there is no suggestion in any
of the cited references that an exhaust heater could be used
to heat a screed passively and indirectly. We do not agree.
Initially we note that while there must be some teaching,
reason, suggestion, or motivation to combine existing elements
to produce the claimed device, it is not necessary that the
cited references or prior art specifically suggest making the
combination (see B.F. Goodrich Co. v. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed. Cir.
1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)) as the appellants would apparently have
us believe. Rather, as stated previously in footnote 3, the
test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in
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