Appeal No. 2005-2545
Application No. 10/447,582
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).
In the present case, the combined teachings of Boje and
Besemer would have provided the artisan with ample suggestion or
motivation to adapt Boje’s specimen storing and testing system
for use with Besemer’s probe arrays, substrates and housings,
thereby arriving at the subject matter recited in independent
claims 32, 41, 42 and 49, in order to furnish the efficiency
benefits described by Boje to the storage and testing of the
particular specimens disclosed by Besemer. Boje’s description of
these benefits belies the appellants’ position that the proposed
reference combination stems from impermissible hindsight.
Indeed, as pointed out by the examiner, Boje’s indication that
the system disclosed therein can be used in conjunction with a
test tube “or other container” (column 2, line 47) is itself
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