Appeal 2007-1220
Application 10/688,033
Appellants further argue
the Examiner fails to address the interrelationship of these
features with other features of the claimed combinations, or
how someone of ordinary skill would have known how to
arrive at the claimed invention from the disclosure of these
references. For example, the Examiner does not address how
to alter Higachinaka's fabric to achieve Love's low basis
weight, or Suzuki's low Gurley stiffness, while meeting other
limitations of the base claim.
(Br. 8.)
The Examiner responds: “The test for obviousness is not whether the
features of one reference may be bodily incorporated into the other to
produce the claimed subject matter but simply what the combination of
references makes obvious to one of ordinary skill in the pertinent art.” In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549-50 (CCPA 1969),
(paraphrased in Answer 13).
We agree with the Examiner that the “test for obviousness” does not
require physical incorporation of one reference into another and reject
Appellants’ suggestion to the contrary. In this case, the secondary
references would have suggested desirable physical properties to be
considered in optimizing the teachings of Higashinaka, if, in fact,
Appellants’ broadly claimed ranges are not already met by the Higashinaka
teachings. See In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995) (“inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness”). Thus, we find
the skilled artisan would have been motivated to combine the teachings of
the cited references with a reasonable likelihood of success. These findings
lead us to conclude the subject matter of claims 35, 37-39, 47, and 49 would
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013