Appeal No. 2007-0800
Application No. 10/066,267
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). As
discussed supra, we agree with the Examiner that one of ordinary skill,
apprised by Eppley of the advantages of a remote power source for tip-up
display devices, would have been motivated to provide Muenchow’s device
with a remote power source. We therefore also agree with the Examiner that
one of ordinary skill would have considered claim 8 obvious over
Muenchow and Eppley. The obviousness rejection of claim 8 is affirmed.
3. ANTICIPATION
Claim 9 stands rejected under 35 U.S.C. § 102(b) as being anticipated
by Muenchow. (Answer 3.)
The Examiner cites Muenchow as disclosing, for use with an ice
fishing tip-up, a device having an enclosure containing an electrically
connected power source 31, tiltable switch 29, and LED light 33. (Final
Rejection 3 (October 19, 2005).) The Examiner states that “Muenchow
shows an inherently reflective enclosure partially due to the lens 39 for the
LED light 33.” (Id.)
Appellant argues that, “[u]nder the doctrine of inherency, if an
element is not expressly disclosed in a prior art reference, the reference will
still be deemed to anticipate a subsequent claim if the missing element ‘is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.’” (Br. 14 (quoting Cont’l Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991) (emphasis by Appellant).) Appellant urges that there is no
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