Appeal No. 2004-1074 Application No. 09/924,772 To overcome this admitted deficiency, the examiner looks to Okamoto’s disclosure of a noise suppressing electrical connector designed to facilitate automated assembly. This connector includes a filter block 1 comprising “a plurality of lead terminals 2 arranged in parallel, a capacitor array 3 for the lead terminals 2, and an earth metal plate 4, all stacked one upon the other and molded together with an insulating synthetic resin 5” (column 3, lines 7 through 11). In proposing to combine Cohen and Okamoto to reject claims 1 and 13, the examiner submits that it would have been obvious to overmold an insulative pin holder over the filter assembly 18 of Cohen (including or not including the insulator 14), as taught in Okamoto, and as suggested by figures 2-5, 10, and 11 of Cohen. The suggestion or motivation for doing so would have been [to] facilitate automated assembly as taught in Okamoto [answer, page 4]. 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 Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007