Appeal No. 2005-2398
Application No. 09/899,029
OBVIOUSNESS
Under Section 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 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 prior art
references as a whole would have fairly 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). This test requires us to
take into account not only the specific teachings of the prior
art references, but also any inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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