Appeal No. 2001-1918
Application No. 09/096,999
“LIGHTING.” We thus find suggestion in the combination of references for adding a
CO-NETIC or NETIC alloy to the aluminum shielding case of Blocher for enhancement
of magnetic shielding as taught by CO-NETIC, for use in the specialized environments
taught by CO-NETIC.
Appellant refers to three articles (Brief at 11-12) authored by appellant, but it is
unclear what the articles are submitted to show (e.g., indicia of nonobviousness as
“commercial success of the invention, satisfying a long-felt need, failure of others to find
a solution to the problem at hand, and copying of the invention by others.” Pro-Mold
and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1572, 37 USPQ2d 1626, 1629
(Fed. Cir. 1996)). The articles, and many of the arguments in the Brief, may form a
basis for showing that appellant’s reasons for modifying the prior art may be different
from that of the prior art before us. However, for the purposes of an obviousness
inquiry, there is no requirement that an artisan’s reasons for making modifications of the
prior art be the same as that of the patent applicant. See In re Kemps, 97 F.3d 1427,
1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693,
16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc) (“Although the motivation to combine
here differs from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”)).
Appellant does make reference (Brief at 12) to an indicator of nonobviousness --
solving a “long-felt and unresolved need” to shield fluorescent ballasts “in order to
-9-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007