Ex parte TATE et al. - Page 5




                 Appeal No. 96-3032                                                                                                                     
                 Application No. 08/321,392                                                                                                             


                 established by what the combined teachings of the references                                                                           
                 would have suggested to those of ordinary skill in the art.                                                                            
                 In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.                                                                             
                 Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,                                                                          
                 881 (CCPA 1981) .  Moreover, in evaluating such references it4                                                                                                           
                 is proper to take into account not only the specific teachings                                                                         
                 of the references but also the inferences which one skilled in                                                                         
                 the art would reasonably be expected to draw therefrom (In re                                                                          
                 Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)), and                                                                          
                 all of the disclosures in a reference must be evaluated for                                                                            
                 what they fairly teach one having ordinary skill in the art                                                                            
                 (In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966)).                                                                         





                          4More specifically, as stated by the court in Keller, 642                                                                     
                 F.2d at 425, 208 USPQ at 881:                                                                                                          
                          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 to those of                                                                               
                          ordinary skill in the art.                                                                                                    
                                                                           5                                                                            





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