Appeal No. 97-4206
Application 08/662,263
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
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
is proper to take into account not only the specific teachings
of the references but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom (In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)), and
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