Appeal No. 1998-0501
Application No. 08/518,997
Obviousness is tested by "what the combined teachings of the references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some teaching or suggestion
supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing a transparent material in both the
bonding of wires and the cap has not been taught or suggested in the prior art applied by
the examiner, and the examiner has not provided a convincing line of reasoning why one
skilled in the art would have been motivated to use these transparent materials.
The examiner maintains that “the cap of Preissler is considered to be a storage
tube which contains the spliced portions.” (See answer at page 5.) We disagree with the
examiner. Here, the examiner is manipulating the prior art in an attempt to meet the
language of the claim. This is not a reasonable interpretation of the prior art as a whole. In
our view, the examiner’s analysis of the claimed invention and the application of the prior
art applied against the claimed invention lacks an analytical linkage to combine the
teachings.
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