Appeal 2006-3327
Application 10/137,582
analysis, the problem examined is not the specific problem solved by the invention
but the general problem that confronted the inventor before the invention was
made motivation”) and Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary
skill in the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”).
ANALYSIS
Appellant groups the claims into two groups: claims 1 and 4-8 as a first
group and claims 2 and 3 as a second group (Br. 4). Appellant makes the same
arguments as to both groups of claims and does not argue for the separate
patentability of claims 2 and 3. Appellant merely states (Br. 4) that the second
group of claims is directed to a split saddle. A statement which merely points out
what a claim recites will not be considered an argument for separate patentability
of the claim. 37 C.F.R. § 41.37(c)(1)(vii) (2006). As such, we treat claim 1 as a
representative claim, and the remaining claims 2-8 stand or fall with claim 1.
Appellant does not contest the Examiner’s findings as to the scope and
content of the prior art or the differences between the prior art and the claimed
invention. Rather, Appellant challenges the Examiner’s finding that a person of
ordinary skill in the art would have been motivated to combine the teachings of
Hanagan and Uchida to make the combination recited in the claims.
We find sufficient motivation to combine Hanagan and Uchida in the
teachings of the references themselves. As stated supra, Uchida teaches that by
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