Appeal No. 97-4042
Application 08/578,248
§ 103, the examiner is of the opinion that it would have been
obvious to make the first pocket of Mackey (i.e., the right-
hand beverage receiving recess 16 as depicted in Fig. 1) of
oval cross-section (thus providing a different “shape” as set
forth in parent claim 13) in view of the teachings of
Anderson. In argument, the appellant on page 20 of the brief
notes the deficiencies of the references individually and
contends that “the only teachings for such modifications comes
from applicants’ specification.” As to the appellants’
criticisms of the references individually, nonobviousness
cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior
art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986). As to the
examiner’s combination of the references, Anderson clearly
teaches an “oval” shaped pocket along one edge of the tray for
the self-evident purpose of accommodating elongated articles.
Applying the test for obviousness as set forth in In re 3
3 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
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