Ex parte ITOH et al. - Page 24




          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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