Appeal No. 2005-1379
Application 09/734,601
establish otherwise. Indeed, the examiner correctly argues that the combined teachings of the
references must be considered for what the combination would have reasonably suggested to one
of ordinary skill in this art, not for the individual teaching of either reference or whether one
reference can be incorporated into the other reference, relying on the authority of 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.”).
The evidence establishes, as the examiner argues, that one of ordinary skill in this art
would have found in Gaines the teaching that a cube with identifying information can be used to
represent a chemical element in a teaching aid for an organized system, and would have
reasonably been led thereby to substitute this identifying piece in place of the card containing
such information in the teaching aid for the periodic table, an organized system, as taught by
Midgley. See, e.g., In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967)
(express suggestion to interchange methods which achieve the same or similar results is not
necessary to establish obviousness). While appellant correctly points out that the embodiment of
Midgley relied on by the examiner is a wall chart, we found above that one of ordinary skill in
this art would have recognized that the chart can function as intended when laid flat on a table.
Indeed, appealed claim 5 encompasses a puzzle apparatus which is flat and the cubic shaped
pieces can be placed thereon.
We further find that, as the examiner argues and appellant acknowledges in the
specification, the well known periodic table was represented in Midgley in a standard manner.
Indeed, as we found above, Midgley would have taught that a standard periodic table can be used
in place of the modified, simplified periodic table illustrated in FIGs. 6 and 7. We interpreted
appealed claim 6 above to encompass a puzzle apparatus having any standard periodic table
which contains the specified arrays as well as the additional arrays that are included in that table.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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