Appeal No. 2002-0993 Page 15
Application No. 09/368,781
Based on our analysis and review of Root and claim 35, it is our opinion that the
only difference is the limitation that the tool has "only one insert with multiple cutting
edges" whereas Root's tool has two inserts (i.e., cutting-plates H) with multiple cutting
edges.
In applying the test for obviousness,3 we conclude that it would have been
obvious at the time the invention was made to a person of ordinary skill in the art to
have replaced one of Root's cutting-plates H with an anvil in view of Petersen's
teaching of known alternative wire cutters such as a cutter-anvil combination shown in
Figures 1 and 2 and the cutter-cutter combinations shown in Figures 3 and 4. In this
regard, it must be borne in mind that where two known alternatives are interchangeable
for their desired function, an express suggestion of the desirability of the substitution of
one for the other is not needed to render such substitution obvious. See In re Fout, 675
F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568,
152 USPQ 618, 619 (CCPA 1967).
3 The test for obviousness is what the combined teachings of the applied prior art would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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