Appeal No. 1996-1767 Page 16
Application No. 08/220,410
Obviousness of claims 18-24 under § 103
Regarding claims 18-22, the appellants make two
arguments. First, they argue, “the cited references do not
provide the motivation for combining the references.” (Appeal
Br. at 8.) The examiner replies, “Fujii's teaching of control
of a digital filter with a CPU is sufficient to suggest
control of the admitted Prior Art digital filter with a CPU.”
(Examiner’s Answer at 5.)
We agree with the examiner. Obviousness cannot be
established by combining teachings of the prior art to produce
a claimed invention absent a suggestion supporting the
combination. In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987). The question is whether there is
something in the prior art as a whole to suggest the
desirability of making the combination. In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998); In re
Beattie, 974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992).
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