Appeal No. 97-3070
Application 08/584,097
In argument the appellant broadly contends that there is
no suggestion to combine the teachings of the references in
the manner proposed by the examiner. It is also the
appellant's contention that Akers (Rejection (1)) and Markle
(Rejection (2)) are directed to nonanalogous art.
We are unpersuaded by the appellant's arguments. While
the obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination (see ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984)), this does not mean that the
cited references or prior must specifically suggest making the
combination as the appellant appears to believe (B.F. Goodrich
Co. V. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37
USPQ2d 1314, 1318 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d
1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)). Rather,
the test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in
the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and
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