Appeal No. 2005-2489
Application No. 09/949,736
Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432. On this record,
the appellant again has not demonstrated that the conventional
NdYAG laser does not possess the claimed function.
In view of the reasons set forth above, and in the final
Office action dated March 6, 2003 and the Answer, we affirm the
examiner’s decision rejecting claims 19 through 33, 37, 40 and
42 through 44 under Section 102.
To establish obviousness under Section 103, the examiner
must demonstrate that the prior art references relied upon
provide some teaching, suggestion or incentive to arrive at the
claimed 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 claimed 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 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) and In re Keller, 642 F.2d
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