Ex Parte Tobita - Page 4



          Appeal No. 2005-1384                                                        
          Application 09/886,200                                                      

          with the discussion in the paragraph of page 7 of our prior                 
          decision.  There we considered the argument misplaced to the                
          extent that appellant urged that the combination of these two               
          references would have changed the operation of Kikuchi such that            
          it would be unable to form its intended purpose.  We viewed                 
          appellant’s argument as arguing the structural combinablitiy of             
          the references would have lead to the inoperablity of the Kikuchi           
          reference.  We did not and continue not to agree with a basic               
          urging in appellant’s views upon the noted court case at page 4             
          of the Request for Rehearing that substantial reconstruction and            
          redesign would be necessary as well as changing the basic                   
          principle of operation.  We stated at the bottom of page 6 in a             
          summary manner that “Plainly, Ohsawa adds a capability to                   
          Kikuchi’s teachings that is not readily recognized within its own           
          content.”  We repeatedly emphasized this in a lengthy discussion            
          since we considered the teachings of Ohsawa to add to the                   
          teachings of Kikuchi in an advantageously enhancing manner.                 
               The test for obviousness is not whether the features of a              
          secondary reference may be bodily incorporated into the structure           
          of a primary reference.  It is also not that the claimed                    
          invention must be expressly suggested in any one or all of the              




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