Ex Parte Hanagan - Page 10



              Appeal 2006-3327                                                                                           
              Application 10/137,582                                                                                     
                     Appellant challenges the Examiner’s basis for motivation to combine, taken                          
              from the references themselves, and argues,                                                                
                            [T]he Examiner fails to note that the key feature of the                                     
                            present invention is the fact that the combination defined                                   
                            by the appended claims enables the motorcycle user to                                        
                            maintain the seatbacks in position within the saddle at the                                  
                            same time as it is being opened and thereafter while he or                                   
                            she is working on any underlying components (Br. 7).                                         
                     Appellant appears to be arguing that the motivation to combine the                                  
              references must be for the same reason as Appellant.  While there must be                                  
              motivation to make the claimed invention, there is no requirement that the prior art                       
              provide the same reason as the applicant to make the claimed invention.  The                               
              reason or motivation to modify the reference may often suggest what the inventor                           
              has done, but for a different purpose or to solve a different problem.  It is not                          
              necessary that the prior art suggest the combination to achieve the same advantage                         
              or result discovered by applicant.                                                                         

                                             CONCLUSIONS OF LAW                                                          
                     We conclude that Appellant has not shown that the Examiner erred in                                 
              rejecting claims 1-8 under 35 U.S.C. § 103 as unpatentable over Uchida and                                 
              Hanagan.                                                                                                   






                                                           10                                                            



Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next

Last modified: September 9, 2013