Ex parte MIYASAKA - Page 8




                 Appeal No. 98-2126                                                                                       Page 8                        
                 Application No. 08/490,180                                                                                                             


                 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) and In re Nilssen,                                                                         
                 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)).                                                                            
                 Instead, obviousness may be 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 evalu-        5                                                                
                 ating such references it 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                                                                             



                          5More 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.                                                                                                    







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