HP loses at the Board

Hewlett-Packard appeal fails in Ex parte Ruhe

“[I]t 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 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, 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 (CCPA 1981) (citations omitted).
Here, the Examiner does not propose that the stepped face feature of Chang, be physically incorporated into the structure of Olson. Instead, the Examiner concludes that the combined teachings of the references would have suggested to one of ordinary skill in the art the Appellant's invention. Appellants’ argument overlooks “the relevant combined teachings of the . . . references.” Andersen, 391 F.2d at 958 (dismissing the argument that a combination would result in an inoperative structure).