Appeal 2007-2306
Application 10/636,120
post and the size of the corresponding positioning hole in the housing,
compared to adding another extensible segment. More importantly, even if
increasing the length of the post would be more cost-effective, we do not
agree that Wakeman teaches away from the Examiner’s combination.
“[T]he fact that the two disclosed apparatus would not be combined by
businessmen for economic reasons is not the same as saying that it could not
be done because skilled persons in the art felt that there was some
technological incompatibility that prevented this combination. Only the
latter fact is telling on the issue of nonobviousness.” Orthopedic Equip. Co.
v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir. 1983).
In addition, Appellant argues that “there does not appear to be any
suggestion in the cited references that any increase in movement of the
support member 25 beyond that illustrated or provided by the Wakeman
system is needed that would necessitate the combination of Moore
therewith” (Reply Br. 7). Thus, Appellant concludes that the “Examiner is
clearly using hindsight reconstruction to piece together purported teachings
of the references to arrive at [claim 10]” (id.).
We are not persuaded by this argument. As recently indicated by the
Supreme Court, “any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l v. Teleflex Inc.,
127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). “[E]vidence of a
motivation to combine need not be found in the prior art references
themselves, but rather may be found in ‘the knowledge of one of ordinary
skill in the art or, in some cases, from the nature of the problem to be
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