Appeal No. 2006-2036 Page 10
Application No. 10/382,753
containment area, it would frustrate the stated purpose of Van Romer to catch any
spill from any location on the aircraft, because a portion of the aircraft would not
be parked over the containment area. As such, we find no motivation to add a
wheel cutout to the fluid containment area of Van Romer.
The examiner argues that 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 those 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). (Examiner’s
Answer, p. 12). While we agree with the examiner’s statement of the law, we find
here that the combined teachings of Van Romer and Telder would not have led one
of ordinary skill in the art at the time of the invention to have added a cutout to the
containment device of Van Romer, because (1) the addition of a wheel cutout to
the containment device of Van Romer would change the basic principle under
which the Van Romer device was designed to operate by not allowing the pilot to
simply drive over the side walls of the containment device to park the entire
aircraft over the containment device; and (2) adding a wheel cutout to the
containment device of Van Romer would not allow the containment device to
capture fluids from any location on the aircraft since the portion of the aircraft
forward of the wheels would not be positioned over the containment area.
As such, we hold that the examiner has failed to set forth a prima facie case
of obviousness, because one skilled in the art would not have been motivated at the
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