Appeal No. 98-2156 Page 7
Application No. 08/421,489
specifically suggest making the combination (B.F. Goodrich Co.
V. Aircraft Braking Systems 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 evaluating3
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)), and all of the disclosures in a reference
3More 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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