Appeal 2007-2372
Application 10/395,654
body” (Michelson, p. 6, par. 74). Accordingly, Michelson teaches that parts
of its implant, including the flanges, may be made from different materials.
Appellant finally argues that “when Morris et al. is combined with
Michelson and Scarborough et al. … the retaining devices are separate from
the body portion of the implant” (Br., pp. 13-14). However, “[t]he 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., 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 the 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. Accordingly, it would
have been obvious to a person of ordinary skill in the art at the time
Applicant’s invention was made to form Michelson’s implant, including the
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