Appeal No. 2003-0505 Page 5
Application No. 08/527,679
cleaning and filter cake removal. The specific question to be answered, therefore, is whether it
would have been obvious to one of ordinary skill in the art to taper the holes of the sludge
trapping container described by DE 374 in view of the disclosure in Nehls of tapering.
Many of Appellant’s arguments miss the mark because they do not squarely address the
above question. The issue here is not whether one of ordinary skill in the art would have
incorporated the microscreen of Nehls in the device of DE 374. Nor is it whether one of ordinary
skill in the art would have bodily incorporated any of the other features of the Nehls device into
the device of DE 374. The issue is whether there is a suggestion for tapering the holes and a
reasonable expectation that tapering would assist in cleaning and filter cake removal when
applied to the device of DE 374. See In re Dow Chem., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988)(“The consistent criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that this process should be
carried out and would have a reasonable likelihood of success, viewed in the light of the prior
art.”); 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 re Bascom, 43
CCPA 837, 230 F.2d 612, 614, 109 USPQ 98, 100 (1956)(“[T]he proper inquiry should not be
limited to the specific structure shown by the references, but should be into the concepts fairly
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