Appeal No. 1997-2691
Application 08/496,849
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit
reasons in Para-Ordnace Mfg. Inc. v. SGS Importers Int'l Inc.,
73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), cert. denied, 519 U.S. 822 (1996), that for the
determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem and who had before him in his workshop the prior art,
would have been reasonably expected to use the solution that
is claimed by the Appellants. However, it is not required
that the Examiner shows that the motivation to make the
modification is the same motivation as that of the Appellants'
motivation. In In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996), citing In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc), our
reviewing court states:
[A]lthough the motivation to combine here differs
from that of the applicant, the motivation in the
prior art to combine the references does not have to
be identical to that of the applicant to establish
obviousness.
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