Appeal No. 2006-1850
Application 10/039,103
Significantly as well, the McGrath patent relied upon by the examiner as evidence
of obviousness of the claimed feature which is in dispute is mentioned as the basis for
appellants own use of this seal film; the above quoted paragraph specifically refers to
McGrath by patent number, USP 4,025,159.
Page 4 of the answer characterizes Phillips as not disclosing the first layer having
a specific elastic modulus, the second layer having a different elastic modulus layer and
the claimed seal film that maintains an air interface “at the cube corner elements.” The
examiner’s subsequent reliance upon the Response at pages 4 and 5 of the answer is only
briefly mentioned in the entire discussion in the brief and reply brief at the bottom of
page 7 of the principal brief alleging that this Response does not remedy the short
comings of the Phillips/McGrath combination. Appellants have not argued before us that
the Response is not properly combinable with Phillips within 35 U.S.C. § 103.
Moreover, in like manner, appellants have not argued that the Response is not properly
combinable with McGrath within 35 U.S.C. § 103. The only argument presented before
us is the combinability of McGrath to Phillips in the brief and reply brief.
We note 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).
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