Appeal 2007-1972
Application 11/141,758
against claim 1, which the Examiner makes clear is not based on the
incorporation of specific doors depicted in Bambardekar with specific poke-
thru fittings depicted in Bonilla, or incorporation of the “additional jacks” of
Bonilla into the poke-thru fittings of Bambardekar. As the Examiner
indicates, the test for obviousness is not whether the features of one
reference may be bodily incorporated into the structure of another reference.
Rather, the test is what the combined teachings of those 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). It is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385,
389 (Fed. Cir. 1983).
Appellant’s response to the legal principle that a conclusion of
obviousness does not require a showing of “bodily” incorporating elements
in the prior art: “the claimed combination cannot change the principle of
operation of the primary reference or render the reference inoperable for its
intended purpose.” (Reply Br. 5.) That argument is based, in turn, on the
maxim that the references must be considered in their entirety. Appellant
does not explain how considering references in their entirety -- which we
acknowledge as a requirement in an obviousness inquiry -- somehow means
that the inventions of the references have to be shown physically
combinable. Appellant does, however, frequently cite to Manual of Patent
Examining Procedure (MPEP) § 2141.02 as support for Appellant’s
position.
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