Ex parte PIRES et al. - Page 8




                 Appeal No. 1996-3178                                                                                                                   
                 Application 08/407,275                                                                                                                 


                 inferences which artisan would have logically drawn therefrom may be properly evaluated in formulating                                 

                 rejection).                                                                                                                            

                          We turn next to appellants’ argument (Brief, page 4) that the examiner has not made it evident                                

                 how Banks and Saliga could be structurally combined, and that instead the examiner is combining ideas                                  

                 and not technology.  We note that 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.  See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.                                    

                 Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).  In other words, the                                       

                 test is not what the individual references themselves teach, but rather what the combination of the                                    

                 disclosures taken as a whole would have suggested to one of ordinary skill in the art.  In re McLaughlin,                              

                 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).  In the case before us, we find that the                                           

                 examiner has properly and sufficiently set forth a prima facie case of obviousness under 35 U.S.C. §                                   

                 103.  We find that representative claim 2 on appeal, which recites a locking means, would have been                                    

                 obvious in light of the collective teachings and concepts fairly suggested by Saliga and Banks.  Banks                                 


                                                                           8                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007