Appeal No. 2004-1903
Application No. 09/973,741
Initially, Appellant contends (Brief, page 5; Reply Brief, page 2)
that, since Rode’s spacer is designed to remain fixed during use
while Harbottle’s spacer continually flexes, the Examiner’s
proposed combination of Rode and Harbottle would destroy the
intended operation of Rode.
After reviewing the applied prior art references in light of
the arguments of record, however, we are in general agreement with
the Examiner’s position as articulated in the Answer. It is
apparent to us from the line of reasoning expressed in the Answer
that the Examiner is not suggesting the bodily incorporation of
Harbottle’s spacer and bearing structural arrangement into the
wheel assembly device of Rode. Rather, it is the disclosed
technique in Harbottle (column 7, lines 18-27) of providing
openings in the spacer to allow for lubrication that is being
relied upon as a suggestion for the proposed combination. “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,
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