Appeal No. 95-1092
Application 08/044,436
Appellants argue that the examiner has misinterpreted the
Fujisawa reference and that the examiner has not made out a
prima facie case of obviousness since there would have been
“no motivation to apply the teachings of the Iwatsu reference
to the context of the Fujisawa reference” (brief, pages 2 and
3).
For the most part, appellants argued the references
separately. The test of obviousness under 35 U.S.C. § 103 is
not what the references expressly or individually teach, but
rather, what their combined teachings would have fairly
suggested to a person skilled in the art. In re Hedges, 783
F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Rosselet, 347 F.2d 847, 851, 146 USPQ 183, 186 (CCPA 1965).
Here, we conclude that the person of ordinary skill in the art
having the Fujisawa and Iwatsu references before him or her,
as well as the admitted prior art on pages 1 and 2 of
appellants’ specification, would have arrived at the invention
embraced by the claims on appeal because the combined
references and admitted prior art would fairly suggest the
claimed method. Appellants’ admitted knowledge of prior art
may be used in determining patentability of their claimed
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