Appeal No. 1997-1285 Page 5
Application No. 08/307,153
teachings is not possible without destroying what the examiner proposes to retain. Neither of these
arguments is persuasive with regard to claim 26.
In making a determination of obviousness, one must look at what the combined teachings of the
references would have suggested to those of ordinary skill in the art. “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.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
Appellant’s first argument, that the primary reference doesn’t teach the claimed product design
and the secondary reference doesn’t teach the claimed process, ignores what the combination of the
two references together would have suggested to one of ordinary skill in the art of making container
closures. “[O]ne cannot show non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” Id. 642 F.2d at 426, 208 USPQ at 882. As the
examiner points out in the answer at page 6, Suzuki establishes the conventional nature of the process
steps. FR 196 establishes the conventional nature of the product shape. The question is whether one
of ordinary skill in the art of forming container closures would have found it obvious to form the closure
of FR 196 by the insert injection molding process of Suzuki. Suzuki specifically discusses the
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