Appeal No. 2006-0178
Application No. 09/877,188
Although the examiner’s finding is correct, his obviousness conclusion derived from this
finding is erroneous. As previously indicated, the examiner concludes that it would have been
obvious for an artisan to provide the admitted prior art snowmobile with a steering position
forward of the forward-most drive track axle in accordance with Christensen in order to “help
provide a stable steering system” (answer, page 6). While the objective of Christensen’s
invention is indeed to provide a stable steering system (e.g., see lines 37-39 in column 1), the
reference contains no teaching or suggestion that the steering position and axle disposition
shown in Figure 3 helps to achieve this stable steering objective. Instead, it is the particular
steering system or suspension designed by patentee which provides the desired stability (e.g., see
lines 39-60 in column 1 and lines 12-14 in column 2).
Thus, an artisan would not have been motivated to provide the admitted prior art with the
steering position and axle disposition shown in Figure 3 of Christensen in order to “help provide
a stable steering system” (answer, page 6) as urged by the examiner. Again, this is because the
Christensen patent contains no teaching or suggestion that the disposition in question helps to
achieve patentee’s stable steering system objective. The examiner’s obviousness conclusion still
would be improper even if we were to assume that the disposition shown in Figure 3 helps to
stabilize Christensen’s steering system. This is because the steering system designs of
Christensen and the admitted prior art are entirely different. Therefore, no reasonable
expectation exists for believing that a feature helpful in stabilizing the Christensen steering
system would be successful in stabilizing the admitted prior art steering system. See In re
O’Farrell, 853 F.2d 894, 903-4, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (obviousness requires a
reasonable expectation of success).
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