Appeal No. 1999-0404 Page 24
Application No. 08/580,256
while there must be some teaching, reason, suggestion, or
motivation to
combine existing elements to produce the claimed device, it is
not necessary that the cited references or prior art
specifically suggest making the combination (see B.F. Goodrich
Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577, 1583, 37
USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d
1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as the
appellants would apparently have us believe. Rather, as set
forth above the test for obviousness is what the combined
teachings of the references would have suggested to one of
ordinary skill in the art. Moreover, in evaluating 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). In this instance, it is our opinion that
Chiang's teaching that his heat transfer tube gives improved
heat transfer performance both in a condensing and an
evaporating application would have been sufficient motivation
to one of ordinary skill in this art at the time of the
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