Ex Parte CONZELMANN et al - Page 7




             Appeal No. 2001-1210                                                               Page 7                
             Application No. 09/255,990                                                                               


             would have been obvious at the time the invention was made to a person of ordinary                       
             skill in the art to have used the method of cleaning prior to printing taught by Wood in a               
             sheet-fed perfecting press process.                                                                      


                    The argument advanced by the appellants does not convince us that claim 1 is                      
             patentable for the following reasons.  First, the appellants have argued the deficiencies                
             of each reference on an individual basis.  However, it is well established that                          
             nonobviousness cannot be established by attacking the references individually when                       
             the rejection is predicated upon a combination of prior art disclosures.  See In re Merck                
             & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).  Second, all of                     
             the teachings of Grindley need not be bodily incorporated into Wood (see In re Keller,                   
             supra, at 642 F.2d 425, 208 USPQ 881) since the artisan is not compelled to blindly                      
             follow the teaching of one prior art reference over the other without the exercise of                    
             independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889,                       
             221 USPQ 1025, 1032 (Fed. Cir. 1984)).  In this case, we find sufficient motivation in                   
             Grindley's teaching (column 1, lines 23-27) that "[v]arious devices are currently                        
             employed in offset presses to remove the dusting powder from the sheets (or                              
             continuous paper web in web-fed presses) prior to passage of the sheets between the                      
             impression and blanket cylinders" for a person of ordinary skill in the art at the time the              









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