Appeal No. 2001-0350
Application 09/243,835
2, since page 9 of the brief indicates that claim 3 is not
argued.
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).
In contrast to this guidance, appellants' arguments between
pages 10 and 12 of the brief consider each of the references
individually and not collectively. Appellants' arguments also in
effect do not argue that the four references relied upon by the
examiner are not properly combinable within 35 U.S.C. ' 103. On
the other hand, the appellants' arguments only take the position
that the features of claim 2 of receiving and holding a printing
plate in a pre-registered position and rotating this plate
backwards when installing it in the press are not taught in the
prior art. With this conclusion we strongly disagree.
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