Appeal No. 2005-1496
Application 09/994,439
In proposing to combine Taber, Giese and Campagna to reject
representative claim 1, the examiner submits that it would have
been obvious “to provide a sole comprising a contoured midsole
and shell shaped outsole as taught by Giese and to form a seam
between the outsole and upper and vulcanize a foxing thereon as
taught by Campagna in the shoe and method of Taber to increase
comfort, support, stability, durability, etc.” (answer, pages 3
and 4).
The appellants counter that the examiner’s rejection is
unsound because it is predicated on an impermissible hindsight
reconstruction of the claimed invention wherein the examiner has
selectively chosen and combined features from Taber, Giese and
Campagna without any suggestion in these references to do so.
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).
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