Appeal No. 2004-0842
Application No. 09/539,454
Cir. 1997). However, on this record, the appellants have not
carried their burden.
Under these circumstances, we are constrained to affirm the
examiner’s decision rejecting claims 9 through 11, 45 and 46
under 35 U.S.C. § 102(b) as anticipated by the disclosure of
Perkins.
OBVIOUSNESS
The obviousness of an 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).
10
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