Appeal 2006-2812
Application 10/149,490
arguments that we have overlooked any relevant points in reaching our
decision that the Examiner drew the proper legal conclusion that the claimed
subject matter would have been obvious to one of ordinary skill in the art
within the meaning of § 103 in view of the applied prior art.
It is Appellants’ belief “that the Board overlooked the motivation
requirement of combining Narayama and Smith” (Request 2, second para.).
At the outset, however, it should be noted that the Supreme Court recently
confirmed the principle that the analysis of obviousness under § 103 cannot
be confined by a formalistic conception of words such as motivation. KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007). It is
now settled that the motivation to combine the disclosures of the prior art
does not have to be explicitly stated in the references, but may be implicit
from a consideration of the prior art as a whole. In re Kahn, 441 F.3d 977,
987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), cited with approval in KSR
Int’l, supra.
In the present case, our opinion specifically addressed Appellants’
argument that there would have been no motivation to roughen the surface
of Narayama’s tubing since the reference discloses that perfect coupling or
bonding is achieved by the application of sufficient pressure on the injected
resin (see paragraph bridging Decision 3 and 4). In particular, we found that
one of ordinary skill in the art would have been motivated to employ the
known technique of roughening the surface of Narayama’s tubing to
enhance bonding as an alternative to the application of pressure. Certainly,
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