Appeal No. 2001-0305 Page 7
Application No. 09/077,356
Appellant's only other argument against the examiner's
rejection is that the Soviet patent does not suggest that the
coupling described therein can be used to couple parts made
from different materials (brief, p. 5). We do not find this
argument persuasive of the nonobviousness of the modification
proposed by the examiner.
It is well settled that "[u]nder section 103, teachings
of references can be combined only if there is some suggestion
or incentive to do so." ACS Hospital Sys., Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). However, as stated in Motorola Inc. v. Interdigital
Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed.
Cir. 1997):
there is no requirement that the prior art contain
an express suggestion to combine known elements to
achieve the claimed invention. Rather, the
suggestion to combine may come from the prior art,
as filtered through the knowledge of one skilled in
the art. See In re Jones, 958, F.2d 347, 351, 21
USPQ2d 1941, 1943-44 (Fed. Cir. 1992) ("there must
be some suggestion for [combining prior art
references], found either in the references
themselves or in the knowledge generally available
to one of ordinary skill in the art"); In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502
(Fed. Cir. 1988) (rejecting applicant's argument
that the prior art must contain an express
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