Appeal No. 1997-0411 Page 5
Application No. 08/441,658
the ‘Eight-In-One’ reference is contextually incompatible with
the teachings of ‘The Print Shop’, ....” (Appeal Br. at 8.)
The examiner replies, “it would have been readily obvious that
the ‘Define Menu’ of ‘Eight-In-One’ would add flexible [sic]
to ‘Print Shop’ to enable not only the direction of paper to
be changed but also fonts to be changed.” (Examiner’s Answer
at 7.) We disagree with the appellants.
The appellants err in construing the criteria for
obviousness. It is unnecessary that inventions of references
be physically combinable to render obvious an invention. 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).
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