Appeal No. 2000-0185
Application 08/847,111
we have come to the conclusion, for the reasons which follow,
that the examiner's rejections of the appealed claims under 35
U.S.C. § 103 will not be sustained.
In determining the propriety of a rejection under 35
U.S.C. § 103, it is well settled that the obviousness of an
invention cannot be established by combining the teachings of
the prior art absent some teaching, suggestion or incentive
supporting the combination. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988); Ashland Oil,
Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 297
n.24, 227 USPQ 657, 667 (Fed. Cir. 1985); ACS Hospital
Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). This is not to say that the
claimed invention must be expressly suggested in any one or
all of the references. Rather, the test for obviousness is
what the combined teachings of the references would have
suggested to those having ordinary skill in the art. See
Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985); In re Kaslow,707
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007