Appeal 2006-2137
Application 10/375,748
under § 103 for the factual findings and conclusions set forth by the
Examiner in the Answer and below.
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
Hosp. Sys., Inc. v. Montefiore Hosp., 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 Sys. 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). In evaluating the prior art references for a suggestion, it is
proper to take into account not only the specific teachings of the references,
but also the 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).
Applying the above obviousness test to the present circumstance, we
determine that the prior art references as a whole would have suggested the
claimed subject matter within the meaning of 35 U.S.C. § 103. As correctly
found by the Examiner (Answer 3-4):
Parker teaches a method of manufacturing low density
friction products such as clutch facings, disk brake pads, brake
linings, brake blocks and the like including mixing together a
binder, reinforcing fibers, fillers, friction modifiers and water to
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