Appeal No. 1996-1387 Page 10
Application No. 08/110,269
examiner replies, “the appellant's argument is not persuasive
because Naemura’s teaching of the shutter is combinable with
Majima.” (Examiner’s Answer at 8.)
The appellant again erred in construing the criteria for
obviousness. It is unnecessary that inventions of references
be physically combinable to render obvious an invention under
review. In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389
(Fed. Cir. 1983). See also In re Nievelt, 482 F.2d 965, 968,
179 USPQ 224, 226 (CCPA 1972) ("Combining the teachings of
references does not involve an ability to combine their
specific structures."). The test for obviousness is not
whether the features of a reference may be bodily incorporated
into the structure of another reference but what the combined
teachings of those references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981).
Here, the examiner does not assert that the features of
Naemura may be bodily incorporated into the structure of
Majima. Instead, he asserts that the combined teachings of
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