Appeal No. 96-1455
Application No. 08/218,279
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In addition, the Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992) (footnote omitted).
The Federal Circuit reasons in Para-Ordnance Mfg. Inc. v.
SGS Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d
1237, 1239-40 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80
(1996), that for the determination of obviousness, the court
must answer whether one of ordinary skill in the art who sets
out to solve the problem and who had before him in his
workshop the prior art, would have been reasonably expected to
use the solution that is claimed by the appellants.
Furthermore, the test of obviousness is not whether features
of a secondary reference may be bodily incorporated into the
primary reference's structure, nor whether the claimed
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