Appeal No. 1998-0129 Page 15
Application No. 08/438,062
would have been obvious for reasons suggested
by the prior art, even though those reasons may
be different from the reasons relied upon by the
inventor and may result in a different
advantage.’
The PTO position is that it is irrelevant that
Wright’s structure was for a particular purpose,
and has properties, that are neither obtainable
from the prior art structures, nor suggested in
the prior art. In this lies the PTO’s error.
In re Wright, 6 USPQ2d 1959, 1961 (Fed. Cir. 1988).
The Examiner has made a fundamental error alleging
that references may be combined for any reason, even
if that reason is irrelevant to the purpose of
Appellants’ invention because Appellants have
demonstrated that the BST on GaAs combination has
properties that are neither obtainable nor suggested
in the Miller et al, McMillan et al, or Koyama et al
references. See also, In re Albrecht, et al., 185
USPQ 585, 588-590 (CCPA 1975). Wright further
states that:
We repeat the mandate of 35 U.S.C. § 103:
it is the invention as a whole that must be
considered in obviousness determinations.
The invention as a whole embraces the
structure, its properties, and the problem
it solves.... Thus the question is whether
what the inventor did would have been
obvious to one skilled in the art
attempting to solve the problem upon which
the inventor was working.
In re Wright, Supra, p. 1961. Here, the cited
references do not address the problem that the
inventors herein were working on.
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