Appeal No. 94-4357
Application No. 07/739,050
Under 35 U.S.C. § 103, 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 prior art must
specifically suggest making the combination. See B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996); 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
prior art 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); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). Moreover, in evaluating such
prior art references it is proper to take into account not
only the speci-
fic teachings of the prior art 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,
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