Appeal No. 2001-2595
Application 09/245,640
In re Shepard, 219 F.2d 194, 197, 138 USPQ 148, 150 (CCPA 1963).
As stated by the Court in In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)
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 addition, while there clearly must be some teaching or
suggestion to combine existing elements in the prior art to
arrive at the claimed invention, we note that it is not necessary
that such teaching or suggestion be found only within the four
corners of the applied references themselves; a conclusion of
obviousness may be made from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint
or suggestion in a particular reference. See In re Boezk, 816
F.2d 1567, 1572, 163 USPQ 545, 549 (CCPA 1969). This is because
we presume skill on the part of the artisan, rather than the
converse. See In re Sovish, 769 F.2d 7638, 743, 226 USPQ 771,
774 (Fed. Cir 1985).
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