Appeal No. 97-2486
Application No. 08/308,983
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination (see,
e.g., ACS Hosp. Sys., Inc. v. Montefiore Hosp., 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 Sys. 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 established by what the combined teachings of the
references would have suggested to those of ordinary skill in
the art. 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 referenc-5
5More specifically, as stated by the court in Keller, 642
F.2d at 425, 208 USPQ at 881:
The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is
it that the claimed invention must be expressly
suggested in any one or all of the references.
Rather, the test is what the combined teachings of
the references would have suggested to those of
ordinary skill in the art.
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