Appeal No. 2001-0090 Page 8
Application No. 08/893,890
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In 3
applying that test, the examiner then determined that it would
have been obvious to a person having ordinary skill in the art
to provide the Admitted Prior Art's spacer with longitudinally
extending grooves in view of the teaching of Bescoby of doing
so for the purpose of cooling.
The appellant argues (brief, pp. 7-9) that the applied
prior art does not suggest the subject matter of claim 1. We
agree.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." Id. 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
3The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art.
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