Ex parte MEANS et al. - Page 6




          Appeal No. 96-4194                                                          
          Application 08/239,732                                                      


               Appellants’ arguments (Brief, pages 6 through 8)                       
          concerning the shortcomings in the teachings of each of the                 
          applied references are not convincing of the nonobviousness of              
          the claimed invention because one cannot show nonobviousness                
          by attacking the references individually where the rejection                
          is based on a combination of references.  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 the skilled artisan.  In re              
          Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).                   
          Thus, appellants’ arguments (Brief, pages 4 through 10) to the              
          contrary notwithstanding, we are of the opinion that the                    
          examiner has presented convincing lines of reasoning for                    
          replacing the movable lamp of Everroad with a multifaceted                  
          mirror as taught by West for the advantage of rapidly and                   
          uniformly scanning a surface for holes (Answer, pages 3, 5 and              
          6), and for replacing a human observer as taught by                         


                                          6                                           





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

Last modified: November 3, 2007