Appeal No. 97-4004
Application 08/459,417
relied upon a hindsight reconstruction of the references to
Clapham, Davidson and Panosh in arriving at a conclusion of
obviousness. We disagree. From our perspective, there is no
need to resort to the appellants' disclosure for a suggestion to
combine the relied on prior art. In order to establish
obviousness under § 103 it is not necessary that the cited
references must specifically suggest making the claimed
combination. See, e.g., 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, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988). Instead, the issue of obviousness is not
only determined by what the references expressly state but also
is determined by what they would fairly suggest to those of
ordinary skill in the art. See, e.g., In re Delisle, 406 F.2d
1386, 1389, 160 USPQ 806, 808-809 (CCPA 1969) and In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549-50
(CCPA 1969). See also In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981):
The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into
the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is
what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
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