Appeal 2007-1422
Reexamination Control 90/007,260
Patent 6,093,139
Appellant argues that elements of Stab’s structures may not be
physically incorporated into Sheldon’s printing machine (Appeal Br.10-11).
This argument does not rebut the obviousness of the combination. “The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference … [r]ather,
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 413,
425, 208 USPQ 871, 881 (CCPA 1981). “Common sense teaches … that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex
Inc., 127 S.Ct. at 1742, 82 USPQ2d at 1397. “[W]hen a patent claims a
structure already known in the prior art that is altered by mere substitution of
one element for another known in the field, the combination must do more
than yield a predictable result.” Id at 1740, 82 USPQ2d at 1395.
CONCLUSION
Having considered all the evidence of record for and against the
patentability of Claims 1-21 of U.S. Patent 6,093,139 under 35 U.S.C. §
103(a), we affirm the appealed final rejections.
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