Appeal No. 1996-2638
Application No. 08/173,930
Masui et al. (Masui ‘198) 0 333 198 Sep. 20, 1989
(Published European Patent Application)
Masui et al. (Masui ‘860) 2 214 860 A Sep. 13, 1989
(Published UK Patent Application)
Claims 1 and 8 through 15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of either
Masui ‘860 or ‘179, and Masui ‘198.
We affirm.
Under 35 U.S.C. § 103, the obviousness of an invention
cannot be established by combining the teachings of the prior
art references 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
references 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 as a whole would have
suggested to those of ordinary skill in the art. In re Young,
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