Appeal No. 2001-0246
Application No. 08/921,103
Appellants also argue that there would have been no
suggestion or motivation for using the recirculating reference
fluid of Hofmeier or the intermittent flow of Covington in a
constraint junction (brief, page 18). Appellants further assert
that modifying the constraint junction of Europe with the
features of a free junction, as disclosed in Hofmeier and
Covington, would not have been obvious (brief, page 21 and reply
brief, pages 4 & 5).
Initially we note that while there must be some teaching,
reason, suggestion, or motivation to combine or modify existing
elements to produce the claimed device, it is not necessary that
the cited references or prior art specifically suggest making
the combination (see B.F. Goodrich Co. v. Aircraft Braking
Systems Corp., 72 F.3d 1577, 1583, 37 USPQ2d 1314, 1319 (Fed.
Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d
1500, 1502 (Fed. Cir. 1988)). Rather, “the suggestion to
combine may come from the prior art, as filtered through the
knowledge of one skilled in the art.” Motorola Inc. v.
Interdigital Technology Corp., 121 F.3d 1461, 1472, 43 USPQ2d
1481, 1489 (Fed. Cir. 1997). See also 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
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