Appeal No. 2005-1595 4
Application No. 09/870,180
REJECTION
The appealed claims stand rejected as follows2:
1) Claims 31, 33, 34 and 36 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Chau and Stamm; and
2) Claims 22 through 30, 32 and 35 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Chau, Stamm and Rowland.
OPINION
We have carefully reviewed the claims, specification and prior art, including all of
the arguments advanced by both the examiner and the appellants in support of their
respective positions. As consequence of this review, we have made the determinations
which follow.
Under 35 U.S.C. § 103, 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. 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
cited prior art references must specifically suggest making the combination. 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 references would
2 See the Answer, pages 3-5 and the Brief, page 5.
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