Appeal No. 2005-1835 Page 9
Application No. 10/106,538
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 obviousness rejection under appeal, the examiner ascertained4 (answer, p.
3) that AAPA shows all features of the claimed invention except for provision of fins and
swingable anchor plates. The examiner then set forth that Sero discloses a hydraulic
setting tool which includes an anchoring device with fins (elements 208, see Figure 20)
and swingable plates (elements 184, see Figures 17-19 and 23). Lastly, the examiner
determined that it would have been obvious to an artisan of ordinary skill at the time of
invention to incorporate these arrangements of Sero into the AAPA for ease of
penetrating into the ground and facilitate the motion of the pile into the soil.
4After 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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