Appeal No. 2005-1063
Application No. 10/126,910
a serial numbering scheme as broadly suggested in Paulsen would
have been readily apparent to one of ordinary skill in the art
and does not appear to depend on the particular number of bags
contained on a roll.
As for appellant’s belief that a combination of primary and
secondary references requires not only a suggestion in the latter
for the combination with the former, but also “that the suggestion
requirement be reciprocal” (request, page 1). We know of no such
requirement. In evaluating the propriety of an obviousness
determination it is only necessary to ascertain whether or not
the reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references before him
to make the proposed substitution, combination, or modification.
It is a long-standing premise of patent law that 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. Rather, the test is
what the combined teachings of the references would have suggested
to those of ordinary skill in the art at the time of appellant’s
invention. See, e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
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