Ex parte ROSE - Page 11




          Appeal No. 1995-5010                                                        
          Application 08/116,261                                                      


          analogous art.  Next,  Appellant further argues a lack of an                
          express teaching or suggestion in either Takahashi or Sakurai               
          to combine the two references [brief, page 13].  This argument              
          is misplaced.  We note that while there must be some teaching,              
          reason, suggestion, or motivation to combine existing elements              
          to produce the claimed device, it is not necessary that the                 
          cited references or prior                                                   
          art specifically suggest making the combination (see B.F.                   
          Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,               
          1583, 37 USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen,              
          851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as               
          Appellant would apparently have us believe.  Rather, the test               
          for obviousness is what the combined teachings of the                       
          references would have suggested to one of ordinary skill in                 
          the art.  See 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,              
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