Appeal No. 99-1173
Application 08/718,122
as four aligned pins with sharp tips to grip the
workpiece as taught by Lederer.
We will not sustain this rejection.
It is fundamental that, “[u]nder Section 103, teachings
of references can be combined only if there is some suggestion
or incentive to do so.” ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). In the present case, even assuming that
Schley and Lederer are analogous art, we find no suggestion or
incentive to combine them in the manner proposed by the
examiner. The purpose of the Schley apparatus is to turn a
brake piston 20 when installing brake pads in an automobile,
while the purpose of the Lederer apparatus is to remove a
disposable oil filter or other device having a “puncturable
housing” (col. 3, lines 6 to 10). Lederer provides prongs 2
with points 3 so that the prongs can puncture the filter
housing 4, whereupon it can be unscrewed. The fact that this
renders the filter unusable is of no consequence to Lederer,
since it is disposable and not intended for reuse (col. 2,
lines 48 to 51). On the other hand, in using the tool of
Schley to rotate a brake piston, the piston is not intended to
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