Appeal 2007-1214
Application 10/272,270
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.” KSR, 127 S.Ct. at 1741,
82 USPQ2d at 1397.
Claim 1 differs from the prior art only in the substitution of one
known compressible spring for another. Therefore, the fact that Appellants’
purpose in using ovoid coil springs was to avoid shortcomings in prior art
springs does not render claim 1 any less obvious, because the prior art
suggested that ovoid springs would be useful as the spring element in the
prior art device depicted in Figure 4.
As discussed supra, “when a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1395-96.
Rather, a conclusion of nonobviousness is supported if the prior art elements
“work[] together in an unexpected and fruitful manner.” Id. at 1740,
82 USPQ2d at 1395.
Here, although Appellants assert that ovoid coil springs eliminate the
need for the additional leaf springs required with circular coil springs
(Br. 9), they do not point to evidence demonstrating that this is an
unexpected advantage over the prior art. “[I]t is well settled that unexpected
results must be established by factual evidence.” In re Geisler, 116 F.3d
1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). Thus, in the absence
of objective evidence, the asserted advantages of ovoid coil springs over the
prior art do not demonstrate that claim 1 is unobvious.
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