Appeal No. 2005-0540 Page 3
Application No. 09/942,199
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). Moreover, in evaluating such references it is proper to take into
account not only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In the rejection before us in this appeal (final rejection, pp. 2-6; answer, pp. 3-5),
the examiner (1) made explicit findings as to the teachings of Grisley and Pontikas;
(2) ascertained1 the differences between Grisley and each of the independent claims
1 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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