Appeal No. 97-4042
Application 08/578,248
to see any relevance in the Gregg patent” (brief, page 21).
As to the particular configuration and parameters of the well,
the appellants contend there is no express teachings of these
limitations in the prior art applied by the examiner.
We are unpersuaded by the appellants’ 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
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), this does not mean
that the cited references or prior art must 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,
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 In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). Moreover, in evaluating such references it
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