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
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007