Appeal No. 2000-0869 Page 4
Application No. 09/150,225
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue in the briefs that the applied prior
art does not suggest the claimed subject matter. We agree.
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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