Ex Parte DEBELIUS - Page 8




            Appeal No. 2002-0354                                                          Page 8              
            Application No. 09/293,455                                                                        


            assembly, we find that a suggestion, teaching, or motivation to combine flows from the            
            references themselves.                                                                            


                   Second, the appellant alleges, "to modify Dafler as suggested by Wrobel would              
            most likely render the bearing of Dafler inoperable."  (Appeal Br. at 6.)  Unfortunately,         
            he does not explain how Dafler would allegedly, "most likely," be rendered inoperable.            
            Moreover, “[w]hat appellant[] overlook[s] is that it is not necessary that the inventions of      
            the references be physically combinable to render obvious the invention under review.”            
            In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (citing                      
            Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200                    
            (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958, 157 USPQ 277, 281 (CCPA                      
            1968)).  See also In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1972)                 
            ("Combining the teachings of references does not involve an ability to combine their              
            specific structures.").  The test for obviousness is not whether the features of a                
            reference may be bodily incorporated into the structure of another reference but what             
            the combined teachings of those references would have suggested to one of ordinary                
            skill in the art.  In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).                


                   Here, combining the teachings of Dafler and Wrobel does not involve an ability to          
            combine their specific structures.  The appellant’s argument overlooks “the relevant              








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