Appeal 2007-0561
Application 10/689,465
1 predictable results, is but an application of ordinary skill. As was stated by the
2 Supreme Court in KSR International Co., slip. op. at 17: “A person of ordinary
3 skill is also a person of ordinary creativity, not an automaton.” The applicants
4 erroneously assert that the level of ordinary skill in the art cannot be relied upon to
5 provide a suggestion to combine reference teachings. It can, as it should, since
6 obviousness is determined from the perspective of one with ordinary skill in the
7 art. The Court of Appeals for the Federal Circuit has also stated that the test for
8 suggestion from the prior art is a flexible one and requires the consideration of
9 common knowledge and common sense. DyStar Textilfarben GmbH & Co., 464
10 F.3d at 1367, 80 USPQ2d at 1651.
11 The Examiner is correct that the applicants have improperly attacked the
12 prior art references individually rather than as a combination. See In re Keller, 642
13 F.2d 413, 426, 208 USPQ 871, 872 (CCPA 1981). The applicants’ insistence on
14 finding every claim feature in each prior art reference as a precondition to applying
15 a teaching from that reference is insensible and renders useless a rejection based on
16 the combined teachings of multiple references. According to the applicants’
17 contention, any single reference in the combination would have already had to
18 disclose every claimed feature before any of its teachings can apply.
19 All of the applicants’ arguments have been addressed. They do not
20 demonstrate any error in the rejections on appeal. According to the applicants’
21 approach, no teaching from any one reference may be selected or applied by one
22 with ordinary skill in the art unless every other feature disclosed by the reference is
23 the same as that claimed by the applicants. That is incorrect and ignores the skill,
24 intelligence, and common sense possessed by one with ordinary skill.
25 As can be seen from Mooney’s Figure 1, if the trough structure were
26 oriented differently as is shown in Meinhardt, such that the set screw can be
14
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