We have carefully considered all of the arguments advanced by appellant and
the examiner and agree with the appellant that the aforementioned rejections under
35 U.S.C. § 103 are not well founded. Accordingly, we do not sustain the examiner's
rejection.
The Rejections under § 103
Under 35 U.S.C. § 103, the obviousness of an invention cannot be established
by combining the teachings of the prior art references absent some teaching,
suggestion or incentive supporting the combination. See 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 prior art references must specifically
suggest making the combination. See B.F. Goodrich Co. V. Aircraft Braking
Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996);
In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988).
Rather, the test for obviousness is what the combined teachings of the prior art
references would have fairly suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In evaluating
such prior art references, it is proper to take into account not only their specific
teachings 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).
3
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007