Appeal No. 1998-1562 Page 16
Application No. 08/611,416
a common pivot axis" as well as "a piston and cylinder unit
pivotally connected to and between at least one of said arms
and said lap processing machine for pivoting said arms about
said axis" is not taught or suggested by the applied prior art
(i.e., Eichenberger and Johannsson). We do not agree.
Initially we note that while there must be some teaching,
reason, suggestion, or motivation to combine existing elements
to produce the claimed device, it is not necessary that the
cited references or prior art specifically suggest making the
combination (see B.F. Goodrich Co. v. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed. Cir.
1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500,
1502 (Fed. Cir. 1988)) as the appellants would apparently have
us believe. Rather, the test for obviousness is what the
combined teachings of the references would have suggested to
one of ordinary skill in the art. See 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 references it is proper to take
into account not only the specific teachings of the references
but also the inferences which one skilled in the art would
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