Ex parte UMEZAWA et al. - Page 5




          Appeal No. 95-4588                                                          
          Application 08/127,123                                                      



                    In reaching our decision in this appeal, we have                  
          given careful consideration to appellants' specification and                
          claims, to the applied prior art references, and to the re-                 
          spective positions articulated by appellants and the examiner.              
          As a consequence of this review, we have made the determina-                
          tion that the examiner's rejection of the appealed claims                   
          under 35 U.S.C.  103 cannot be sustained. However, pursuant                
          to 37 CFR  1.196(b), we have also entered a new ground of                  
          rejection, infra, under 35 U.S.C.  112, first paragraph,                   
          against the appealed claims.  Our reasons follow.                           


                    The proper test for obviousness is what the combined              
          teachings of the references would have suggested to those                   
          having ordinary skill in the art.  See Cable Elec. Products,                
          Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-              
          887 (Fed. Cir. 1985); In re Kaslow, 707 F.2d 1366, 1375, 217                
          USPQ 1089,                                                                  


          1096 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 208                 
          USPQ 871, 881 (CCPA 1981).  The law followed by our court of                

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