Appeal No. 1999-0419
Application 08/383,483
Rather than repeat the positions of the appellants and the examiner, reference is
made to the brief and reply brief as well as the answer for the respective positions
thereof.
OPINION
Of claims 1, 2, 5-22, 25, 30, 31 and 36 on appeal, we sustain the rejection of
claims 1, 2, 13, 14, 16, 17, 25, 30 and 31. We therefore reverse the rejection as to
claims 5-12, 15, and 18-22 and 36.
At the outset, we note that the test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of a primary
reference. It is also not 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 414, 425, 208 USPQ 871, 881 (CCPA 1981); In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
To the extent appellants argue that the purposes of the references relied upon
by the examiner are different from the appellants’ disclosed purpose, this is not
pertinent to the issue and is essentially irrelevant if the prior art teachings would have
led the artisan to construct an arrangement having the claimed structural features.
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