Appeal 2006-2950
Application 10/036,126
electrically conductive antistatic coating composition of the type described
in Muys within the meaning of 35 U.S.C. § 103.
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).
Optimization of a variable which recognized in the prior art to be a
result effective variable would ordinarily be within the skill in the art. In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
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