Appeal No. 2001-0707 Page 6
Application No. 09/068,526
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, it is our
opinion that the prior art contains none. In that regard, it
is our view that Young clearly suggests bending the flat
serpentine configuration and wires attached to it about axes
at points 12 and 15 located between adjacent straight pipe
sections 10. In order to modify the method suggested by Young
to arrive at the claimed method there must be some teaching or
motivation in the applied prior art. Since Thomas teaches
only bending a flat serpentine configuration without wires
attached to it about axes corresponding to one or more of the
straight pipe sections, it is our opinion that the teaching of
Thomas even when taken with the teachings of Beauvais would
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