Appeal No. 1999-1499
Application No. 08/764,736
would have suggested to one of ordinary skill in the art at
the time the invention was made to modify the Borg-Warner
reference by providing a centrally located finger to engage
depression 34. Therefore, we must agree with appellants that
in this particular instance the combination proposed by the
examiner is based on what appellants teach and not on what the
prior art references would have fairly taught or suggested to
one of ordinary skill in the art at the time of appellants'
invention.
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.
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