Appeal No. 2004-0837
Application No. 09/778,481
The examiner has not proffered any scientific reasoning and/or
evidence to doubt the accuracy of the appellants’ statements in
the specification. See the Answer in its entirety. Accordingly,
we are constrained to reverse the examiner’s Section 112, first
paragraph, rejection of claims 1 through 22 as lacking an
enabling disclosure for the subject matter presently claimed.
OBVIOUSNESS:
Under Section 103, the obviousness of a claimed invention
cannot be established by combining the teachings of the prior art
references absent some teaching, suggestion or incentive
supporting the combination. See ACS Hospital Systems, Inc. v.
Montefiore Hospital, 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 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 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). In determining the existence of such
suggestion, it is proper to take into account not only the
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