Appeal No. 97-0734 Page 7
Application No. 08/058,592
The obviousness issue
We will not sustain the rejection of claims 1 through 23
under 35 U.S.C. § 103.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id.
In this case, it is our determination that the combined
teachings of McMurray and Siciliano do not contain any
disclosure or suggestion supporting the modification of
McMurray proposed by the examiner. In fact, the advantage of
utilizing alternating thicker and thinner wales is not
appreciated by the prior art applied by the examiner.
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