Appeal 2007-2618
Application 10/713,178
Thus, on this record, we determine that one of ordinary skill in this art
routinely following the combined teachings of Onodera, Ungar, and Messer
Griesheim would have reasonably arrived at the claimed hand-held laser
welding assemblies having laser reflection shields, means of attaching such
shields to said assemblies, and sensors on the shields as encompassed by
claims 1, 12, 15, 24 and 26, including all of the elements thereof, arranged as
required therein, without recourse to Appellants’ Specification. See, e.g.,
KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395
(2007) (a patent claiming a combination of elements known in the prior art is
obvious if the improvement is no more than the predictable use of the prior
art elements according to their established functions); In re Kahn, 441 F.3d
977, 985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981);4 In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of
4 The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
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