Appeal No. 97-0894
Application 08/069,931
reference may be bodily incorporated into the structure of the
primary reference, and it is not 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).
Note also In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991). The above-noted case law clearly addresses the
essence of appellant’s arguments and argumentative approaches and
the earlier noted consideration of the prior art addresses many
of the specific arguments raised by appellant. It is thus
apparent that the examiner has not exercised prohibitive
hindsight in relying upon the three prior art references as the
basis for the rejection of the claims on appeal, and the
examiner’s reasoning as well as our own embellished analysis
indicate an ample motivation or desirability from an artisan’s
perspective to have combined the teachings of the respective
references to have arrived at the claimed invention. Combining
teachings of references does not involve an ability to combine
their specific structures. In re Nievelt, 482 F.2d 965, 968, 179
USPQ 224, 226 (CCPA 1973).
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