¶ 7.37.02 Unpersuasive Argument: Bodily Incorporation
In response to applicant’s argument that [1], 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Examiner Note:
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
2. This form paragraph must be preceded by form paragraph 7.37.