Appeal No. 2005-2174
Application No. 10/060,614
and an indicia tag 50 attached to the cover in the area bounded by the light elements.
The device may also include a pair of tines 55 for insertion into material such a meat
product or the like for mounting the device in a display orientation. Sernovitz adds,
though, that “[i]t will be appreciated that alternative supporting means may be provided,
such as adhesive mounting means on the rear of the housing 11, easel means, hanging
means and the like” (column 3, lines 33-36).
Combining Boggess and Sernovitz to reject the appealed claims, the examiner
submits that
[i]n view of the teachings of Sernovitz it would have been obvious to one
[of ordinary skill] in the art to modify Boggess et al. by attaching a light
source to the distal cantilevered portion [i.e., frame 16 or 216] since this
would allow the distal cantilevered portion to emit a flashing, attention-
grabbing visual display [answer, page 3].3
The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of a 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. In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
Given this test, the combination of Boggess and Sernovitz proposed by the
examiner is reasonable on its face. The requisite suggestion or motivation for the
3 A fair reading of the rejection in full (see page 3 in the answer) belies the appellant’s contention (see, for
example, pages 16, 17 and 21 in the main brief) that the examiner failed to compare the appealed claims
to Boggess, determine the differences therebetween and advance any rationale for the proposed
8
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