Appeal No. 1998-2504
Application No. 08/664,279
unit; and . . . a transport mechanism that . . . in response to said detection, interrupting
said cartridge exchange to transport the priority slot cartridge to the drive unit.” Appellants
argue that Fago does not teach or suggest a separate (“external”) cartridge slot for priority
processing and that the external slot 17 of Kobayashi is used only for the exchanging of
cartridges. (See reply brief at page 2.) (See Kobayashi at col. 7, lines 1-3, col. 10, line 25
et seq., and col. 12, lines 6-9.) We agree with appellants. Furthermore, the external door
22 in Kobayashi is used for exchanging cartridges between the external pack 21 and the
storage devices 13 a and 13 b. Therefore, there is no teaching or suggestion of a need for
priority processing of cartridges in Kobayashi.
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.,
32 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. In fact, the advantages of utilizing a separate priority
slot in combination with a cartridge magazine is not appreciated by the prior art applied
by the examiner.
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