Ex Parte Bintz et al - Page 4



          Appeal No. 2005-2666                                                        
          Application No. 09/496,634                                                  

          positions.  This review has led us to conclude that the                     
          examiner’s Section 103 rejection is well founded.  Accordingly,             
          we affirm the examiner’s Section 103 rejection.  Our reasons for            
          this determination follow.                                                  
          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 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 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).  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,           
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