Appeal No. 2006-1778
Application No. 09/776,364
Appellant’s Request for Rehearing, we have reconsidered the arguments as
to these corresponding rejections set forth at pages 16 through 20 of the
principal Brief on appeal together with the arguments in the Request for
Rehearing.
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).
Once again, Appellant’s arguments in the Request for Rehearing
appear to focus upon the approach of combining structures rather than
combining the teachings and suggestions among the prior art relied upon as
the Examiner has done in the Answer and Supplemental Answer. Taken
from this perspective, we stated earlier and continue to believe that the
artisan would have seen a complementary nature to the broad teaching and
suggestibility of the references to Gartner and Fitting. Within 35 U.S.C.
§ 103, the artisan would not have “seen” only the specific
structures/database structures set forth, for example, in the paragraph
bridging pages 2 and 3 of the Request for Rehearing.
In our prior Decision, we essentially agreed with one of the
Appellant’s urgings that Gartner did not teach or suggest a plurality of
different test systems even though he plainly taught a system for a plurality
of users. Additionally, we did not question the Examiner’s statement at page
3
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