Appeal No. 2003-0083 6
Application No. 09/691,532
Appellant argues in the main brief as follows:
. . . . If the magnetic rod 11 of Frehse was combined with the flexible axle
plug 68 of Ehrlich, the non-flexible solid magnetic rod 11 would hinder the
opening and closing of the slit 72. The addition of the magnetic rod of
Frehse would ruin the benefit of flexibility of the plug 68.
Additionally, the apparently thin membrane 70 of Ehrlich would not be
able to support a magnetic rod 11. Also, attracting metal particles through
the proposed magnet would tear the thin membrane 70. There is thus no
motivation to combine Ehrlich and Frehse. The proposed combination would
ruin benefits of Ehrlich, which renders the combination improper under true
patent laws. [Main brief, page 4.]
This argument is repeated in the reply brief.
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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the present case, we agree with the examiner that the combined teachings of
Ehrlich and Frehse would have suggested the subject matter set forth in independent
claim 1.
With regard to the basic proposed combination of the two references, we share the
examiner’s view that it would have been obvious to provide the wheel axle assembly of
Ehrlich with a magnetic portion in view of Frehse. Frehse’s teaching of providing a wheel
axle with a magnet for the purpose of collecting ferrous metallic particles from the
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