Appeal 2006-3342
Application 10/195,217
1 127 S.Ct. at 1742, 82 USPQ2d at 1397 (emphasis added), it is clear that the
2 second part of the analogous-art test as stated in Clay, supra, must be
3 expanded to require a determination of whether the reference, even though it
4 may be in a different field from that of the inventor's endeavor, is one which,
5 because of the matter with which it deals, logically would have commended
6 itself to an artisan's (not necessarily the inventor's) attention in considering
7 any need or problem known in the field of endeavor. Furthermore, under
8 KSR it is not always necessary to identify a known need or problem as a
9 motivation for modifying or combining the prior art. See KSR, 127 S.Ct. at
10 1740, 82 USPQ2d at 1395 (“The Court [in United States v. Adams, 383 U.S.
11 39, 40 (1966)] recognized that when a patent claims a structure already
12 known in the prior art that is altered by the mere substitution of one element
13 for another known in the field, the combination must do more than yield a
14 predictable result.”) (emphasis added). See also Sakraida, 425 U.S. at 280,
15 189 USPQ at 452 (“Our independent examination of that evidence persuades
16 us of its sufficiency to support the District Court's finding ‘as a fact that each
17 and all of the component parts of this patent … were old and well-known
18 throughout the dairy industry long prior to the date of the filing of the
19 application for the Gribble patent”’).
20
21 ANALYSIS
22 We will sustain the Examiner’s rejection of claims 7, 8, 11, 12, 14,
23 15-17, 20 and 22 under 35 U.S.C. § 102(e). We are not persuaded by the
24 Appellants’ argument that Mahone does not disclose a refrigerator shelf
25 because it is not necessary for Mahone to disclose a refrigerator shelf to
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