Appeal No. 95-3725
Application 07/944,318
Obviousness cannot be based only on the broad idea that
to make something more compact would be obvious. This position
is tantamount to saying that no invention which makes the prior
art faster, more efficient or cheaper is patentable because these
are obvious desirable results. It is not the result achieved
which determines the patentability of an invention. The claimed
invention must be considered as a whole to determine if it would
have been obvious in view of the teachings of the prior art.
Thus, even if it would have been obvious to broadly make a
combination of elements more compact, the question for
patentability purposes is whether the specific arrangement
recited in the claims would have been obvious in view of the
applied prior art. The examiner has ignored this question in
this case.
The examiner’s position is summed up in the supplemental
answer as follows:
If the space into which the circuit
board must fit is L-shaped it does not
require an MIT professor to discover
that it would be a good idea to make the
circuit board L-shaped.
This would be an interesting observation except where is it
written that the space in which the circuit board must fit has to
be L-shaped? That is not an appropriate place for the artisan to
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