Appeal No. 1999-2030 Page 13
Application No. 08/423,077
fiber tip to determine the approximate location of the lesion.
Claim 22 depends from claim 21.
In the answer (pp. 3-4), the examiner determined that it
would have been obvious to the artisan of ordinary skill to
employ an illuminated instrument such as the fiber optical
stylet of Kolff in the prior art method (i.e., hookwire
localization). The appellant argues (substitute brief, pp.
19-20) that the method set forth in claim 21 is not suggested
by the applied prior art. We agree with the appellant.
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 applied
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