Ex parte CLARK - Page 5




          Appeal No. 1998-1772                                       Page 5           
          Application No. 08/578,047                                                  


          sufficient to establish a case of obviousness only with                     
          respect to claim 1.  Accordingly, we will sustain the                       
          examiner's rejection of claim 1 under 35 U.S.C. § 103.  We                  
          will not sustain the examiner's rejection of claims 2, 4, 11                
          and 12 under                                                                
          35 U.S.C. § 103.  Our reasoning for this determination                      
          follows.                                                                    


               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 reasonably be                 
          expected to draw therefrom.  In re Preda, 401 F.2d 825, 826,                
          159 USPQ 342, 344 (CCPA 1968).  Furthermore, the conclusion                 
          that the claimed subject matter is obvious must be supported                
          by evidence, as shown by some objective teaching in the prior               
          art or by knowledge generally available to one of ordinary                  







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