Appeal No. 96-3032
Application No. 08/321,392
that as expressly set forth in 37 CFR § 1.192(c)(7): "Merely
pointing out differences in what the claims cover is not an
argument as to why the claims are separately patentable."
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and all of the respective
arguments advanced by the appellants in the brief and by the
examiner in the answer. As a consequence of this review, we
will sustain both of the above-noted rejections.
Initially we note that while 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, e.g., 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
references or prior art must specifically suggest making the
combination (B.F. Goodrich Co. V. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir.
1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)). Instead, obviousness may be
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