Appeal 2006-1966
Application 10/246,506
Appellant argues that there must be some suggestion, motivation or
teaching in the references themselves to sustain an obviousness rejection.
However, in KSR cited above, the Supreme Court relied on a functional
analysis instead. In other words, if the use of the dowel 43 as a stop pin
would have yielded the predictable result in MacKenzie of moving the
clamping joint into an expansion range just as it functions in Schlueter, then
the combination of references would likely have been obvious to one of
ordinary skill. This is particularly true when appellant presents no evidence
that the inclusion of this feature in MacKenzie was uniquely challenging or
difficult for one of ordinary skill. See, Leapfrog Enterprises, Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162, 82 USPQ 1687, 1692 (Fed. Cir. 2007).
Appellant further argues that there is no reasonable expectation of
success in combining the two prior art teachings. We disagree. In this case,
there is a design need or market pressure to solve the problem of opening the
clamp to the expansion range without the use of hammers and wedges or
chisels. See Specification 4:24-29. We further note that there are a finite
number of identified, predictable solutions to such a problem such as the
solution disclosed by Schlueter. Accordingly, one of ordinary skill would
have good reason to pursue the known options when they are within his or
her technical grasp. Inasmuch as this would lead to an anticipated success, it
is likely that this combination of references is not a product of innovation,
but of ordinary skill and common sense. See, KSR, 127 S.Ct. at 1742, 82
USPQ2d at 1397.
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