Appeal No. 98-2126 Page 7
Application No. 08/490,180
establish a prima facie case of obviousness the prior art
teachings must be sufficient to suggest to one of ordinary
skill in the art making the modification needed to arrive at
the claimed invention. See, e.g., In re Lalu, 747 F.2d 703,
705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
In view of the above, we will not sustain the rejection of
claims 34 and 45-47 under 35 U.S.C. § 103(a) based on the
teachings of Keiji.
Under the provisions of 37 C.F.R. § 1.196(b) we make the
following new rejection.
Claims 45-47 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keiji in view of Straub. Initially we
note that while the obviousness of an invention cannot be
established by combining the teachings of the prior art absent
some teaching, suggestion or incentive supporting the combina-
tion (see, e.g., ACS Hospital Systems, Inc. v. Montefiore
Hospital, 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 Systems Corp., 72 F.3d 1577,
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