Appeal No. 2003-0735
Application 09/238,859
bodily incorporation of Kemeny’s spectrometer into the microscope
of the admitted prior art. Rather, as pointed out by the
Examiner (Answer, page 5), it is “. . . Kemeny’s teaching that a
temperature sensor and a heating/cooling controller are needed
when using an AOTF that is used to modify the Prior Art.” “The
test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference. . . . Rather, the test is what the combined
teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544,
1550, 218 USPQ 385, 389 (Fed. Cir. 1983) and In re Nievelt, 482
F.2d 965, 967, 179 USPQ 224, 226 (CCPA 1973).
For the above reasons, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome
by any convincing arguments from Appellants, the Examiner’s
35 U.S.C. § 103(a) rejection of independent claim 2, as well as
dependent claims 4, 5, 7, and 8, which fall with claim 2, is
sustained.
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of all of the claims on appeal. Therefore,
the decision of the Examiner rejecting claims 2, 4, 5, 7, and 8
is affirmed.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007