Appeal 2006-1414
Application 10/099,381
pass through the tissue as required by the Heller device” (Br. 7). Appellants
additionally argue:
Lonky has . . . several legal maladies that
warrant overturning the rejection: a.) it does not
remedy the fact that Heller fails to show an
endotracheal intubation device having a light
placed so that the light emanates at least "distally,"
b.) the Lonky light is not of the type required for
operation of the Heller device as an infant
endotracheal device, and c.) the Heller
[sic, Lonky?] chemiluminescent lights are placed
in an entirely different type of device and are used
for specifically different purpose. [Br. 8.]
Appellants’ arguments do not specifically address the Examiner’s
proposed combination of reference teachings. Instead, Appellants’ argument
focuses on Lonky individually as “[having] . . . several legal maladies that
warrant overturning the rejection” (id.). Appellants are attacking a reference
individually without considering what the combined teachings of the
references would have suggested to those of ordinary skill in the art.
The predecessor to our reviewing court has held that “one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426, 208 USPQ 871, 882 (CCPA 1981). In this regard, 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. Id., 642 F.2d at
425, 208 USPQ at 881.
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