Appeal No. 2006-1292 Page 5
Application No. 10/314,742
combine references is provided by prior art taken as a whole. In re Beattie, 974 F.2d
1309, 24 USPQ2d 1040 (Fed. Cir. 1992). In an obviousness determination, the prior art
need not suggest solving the same problem set forth by appellant(s). In re Dillon, 919
F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc)(overruling in part
In re Wright, 848 F.3d 1216, 1220, 6 USPQ2d 1959, 1962 (Fed. Cir. 1988)), cert.
denied, 500 U.S. 904 (1991).
The examiner has plainly applied the teachings and suggestions of Hofmann and
Chrones within 35 U.S.C. § 103. We note also that 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 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 414, 425, 208 USPQ 871, 881 (CCPA 1981); In re Young,
927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
Appellants’ apparently more refined argument in the Reply Brief is that combining
the Chrones cover with the device socket of Hofmann would completely defeat the
purpose of Hofmann’s approach. This again is a variation of the argument just treated.
Carrying this line of reasoning to its full extent, appellants arguments’ would not permit
any modifying teachings of any reference and thus render ineffective 35 U.S.C. § 103.
Lastly, we briefly turn to the second stated rejection of dependent claims 15, 19
and 23 where the examiner additionally relies upon Shinozaki. Here, appellants
apparently argue again (Brief, bottom page 7) the first stated rejection of independent
claims 1, 16 and 20 and do not provide any challenge to the examiner’s findings with
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