Appeal No. 98-2735 Application No. 90004386 Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does not mean that the cited prior art must specifically suggest making the combination. See B.F. Goodrich Co. V. Aircraft Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather, the test for obviousness is what the combined teachings of the prior art would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991);In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the [prior art] references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). Nor does the prior art references need to disclose explicitly all the utilities or benefits of the claimed invention to render the claimed subject matter unpatentable under Section 103. See In re Dillon, 919 F.2d 688, 692, 696, 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007