Appeal 2007-1204
Application 10/370,869
asserted hindsight and nonanalogous art arguments are thus negated by the
common securing feature. Moreover, because both references utilize similar T-slot
positioning structures, the proposed modification to the base 10 in Engibarov
would not detract from its intrinsic structure.
The Examiner has provided reasons to combine the teachings of the prior
art.1 In response, the Appellants maintain “[i]t is a fundamental premise in patent
prosecution practice that, in making an assertion of obviousness of Appellants'
invention in view of a combination of references, there must exist in the references
cited by the Examiner a suggestion or incentive (motivation) supporting the
combination of references ….” (Br.14, 15). This was not a correct statement of the
law at the time the brief was filed (see In re Kahn, 441 F.3d 977, 987-88, 78
USPQ2d 1329, 1336, 1337 (Fed. Cir. 2006) (finding that the teaching, motivation,
or suggestion may be implicit from the prior art as a whole, and such implicit
motivation may come from the knowledge of one of ordinary skill in the art or the
nature of the problem to be solved), and it is no longer the law in view of the
Supreme Court’s recent holding in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
82 USPQ2d 1385 (2007). In KSR, the Court characterized the teaching,
suggestion, motivation test as a “helpful insight” but found that when it is rigidly
applied, it is incompatible with the Court’s precedents. KSR, 127 S. Ct. at 1741, 82
1 One reason provided by the Examiner is, "to have a portable clamp that is
attachable to any number of work surfaces for semi permanent use of a clamping
base" (Answer 4). In his Supplemental Answer (second paragraph) to Appellants'
Supplemental Reply (Nov. 29, 2005, 2), the Examiner states that combining the
teachings would have been "clear because you have multiple workholders you are
going to modify each of them to make improvements to the current workholders."
8
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