Appeal No. 98-0985 Page 9
Application No. 08/271,022
The appellants' argument (brief, pp. 21-25) with respect
to claims 42, 43 and 72-74 is unpersuasive for the following
reasons.
First, the appellants argue the deficiencies of each
reference on an individual basis. However, nonobviousness
cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior
art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Lastly, the appellants argue that the claimed subject is
not suggested by the applied prior art. We do not agree.
When it is necessary to select elements of various teachings
in order to form the claimed invention, we ascertain whether
there is any suggestion or motivation in the prior art to make
the selection made by the appellants. Obviousness cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
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