Appeal No. 2002-0267 Page 4
Application No. 09/440,496
Di Egidio within the field of the appellants’ endeavor, as well as commending itself to
the appellants’ attention in view of the fact that it utilizes an outline of the states of the
continental United States as its playing board, and receives tokens in openings in the
board. Ball is directed to boards for mounting collections of coins for display, which
coincides with the title of the appellants’ invention. Moreover, the appellants have not
provided reasons why the two references do not fall within the categories set forth
above in Wood and Clay, but have compared their relevance to one another, which is
not the required legal test. It is our opinion that both Di Egidio and Ball are analogous
art.
All of the claims before us stand rejected under 35 U.S.C. § 103(a). The question
under Section 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. v. Biotech Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843,
1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). While there must be some suggestion or motivation
for one of ordinary skill in the art to combine the teachings of references, it is not
necessary that such be found within the four corners of the 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 Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549
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