Appeal No. 2000-0975
Application No. 08/956,402
We do not agree with appellants’ characterization (Reply Brief at 2, final ¶) that
the rejection fails to demonstrate “suggestion.” The Answer points to specific sections
of the references where suggestion is deemed to reside, and appellants have not
explained why the findings should be considered erroneous. Even so, the suggestion
to modify the art to produce the claimed invention need not be expressly stated in one
or all the references used to show obviousness. The test is whether the combined
teachings of the prior art, taken as a whole, would have rendered the claimed invention
obvious to one of ordinary skill in the art. In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995).
The remainder of appellants’ arguments in defense of claim 1 consist of pointing
out deficiencies in individual references. The arguments do not speak to the
combination of the references applied. Nonobviousness cannot be established by
attacking references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375,
380 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)).
Having not persuaded us of error in the rejection of claim 1, we sustain the
section 103 rejection of the claim.
For substantially the same reasons, we also sustain the rejection of independent
claim 10. Our understanding of the claim’s scope is based on appellants’ definition of
“paths” at page 6, lines 10 and 11 of the instant specification. “Paths” are simply
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