Appeal 2006-2769
Application 09/846,980
V. PRINCIPLES OF LAW
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 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).
A prima facie case of obviousness exists when the claimed range and
the prior art range do not overlap but are close enough such that one skilled
in the art would have expected them to produce products having the same
properties. Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783,
227 USPQ 773, 779 (Fed. Cir. 1985). Moreover, “discovery of an optimum
value of a result effective variable in a known process is ordinarily within
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