Appeal No. 20006-1116
Application No. 10/450,439
the examiner’s rejections for reasons essentially based upon the
findings of fact set forth in the Answer. We add the following
primarily for emphasis and completeness.
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 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, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
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