Appeal No. 98-1451 Page 6
Application No. 08/529,187
The appellant argues (brief, pp. 8-13) that (1) there is
no suggestion in the applied prior art to modify Wilger in the
manner proposed by the examiner, and (2) Egigian is non-
analogous art. We agree.
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. Here, the prior art
contains none. In fact, the advantages of utilizing a
magnetic support surface as set forth in the claims under
appeal are not appreciated by the prior art applied by the
examiner.
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