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Ex parte NAITO - Page 7
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Board of Patent Appeals and Interferences > 1998 > Ex parte NAITO - Page 7
Appeal No. 95-2898
Application 08/053,193
The Federal Circuit states that "[t]he mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit reasons in
Para-Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d
1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.
denied, 117 S.Ct. 80 (1996), that for the determination of
obviousness, the court must answer whether one of ordinary skill
in the art who sets out to solve the problem and who had before
him in his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by the Appellants.
Furthermore, the test of obviousness is not whether features of a
secondary reference may be bodily incorporated into the primary
reference's structure, nor whether the claimed invention is
expressly suggested in any one or all of the references; rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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