Appeal No. 1997-0252
Application 08/200,820
grouped to stand or fall with claim 7 [brief, page 9]. The examiner finds that Clabes
teaches a magnetic force sensor of the type recited in claims 7 and 22 in which a probe tip
is coated with a hard-magnetic material and is scanned across a surface having
magnetization. The examiner notes that Clabes does not disclose any specific alloy of
hard-magnetic material, but the examiner observes that the selection of such an alloy
would have been obvious to the artisan [answer, page 3].
Appellants make several arguments in opposition to the rejection which we will
consider in turn. First, appellants argue that there is no recognition of the problem in
Clabes which the invention is designed to overcome. While recognition of the problem
may be a factor in determining the obviousness of a solution, it is not necessarily so. The
test for obviousness is whether the references would have suggested doing what
appellants have done. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). Thus, the absence of express suggestion or motivation in the applied prior art is
not alone determinative. The prior art need not suggest solving the same problem set forth
by appellants. In re Dillon, 919 F.2d 688, 692-693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (in banc) (overruling in part In re Wright, 848 F.2d 1216, 1220, 6 USPQ2d 1959,
1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991). For reasons which will become
clear below, we find that Clabes suggests the structure recited in claims 7 and 22, and the
problem to be solved, therefore, is not critical.
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