Appeal No. 2002-1791
Application No. 08/588,945
Accordingly, we will sustain the examiner’s Section 103 rejection
for essentially those findings of fact and conclusions set forth
in the Answer. We add the following primarily for emphasis and
completeness.1
Under Section 103, the obviousness of an invention cannot be
established by combining the teachings of the cited prior art
references absent some suggestion or incentive supporting the
combination. See ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). This does
not mean that the prior art references must specifically suggest
making the combination. See B.F. Goodrich Co. v. Aircraft
Braking Sys. 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 references 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).
1 The present application on appeal is copending with
another application of the appellants that is also on appeal,
U.S. Application Serial No. 08/588,947 filed January 19, 1996
(Appeal No. 2002-2022). Accordingly, the appeals of the present
and copending applications are being considered together and will
be decided concurrently.
3
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