Appeal No. 1997-1383
Application No. 08/217,392
MOTIVATION
Appellants argue that, "mere awareness of features in
these references, even if it is analogous, is not sufficient
to show a motivation to combine teachings." (Brief-page 12)
"It remains appellants’ position that neither the prior art
nor any convincing line of reasoning suggests the desirability
of combining the references." (Brief-page 13). These two
points are repeated in various ways in response to ten
statements found in the Examiner’s Office Action and repeated
on pages 12 and 13 of the brief.
"It should be too well settled now to require citation or
discussion that the test for combining references is not what
the individual references themselves suggest but rather what
the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art." In re McLaughlin, 443
F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). The test for
obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references.
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