Appeal No. 1998-1114
Application 08/353,254
why one of ordinary skill would have arranged the elements as
claimed without using Appellant's disclosure as a guide.
The Examiner concludes that "[i]n view of the high level
of skill which must be attributed to one of ordinary skill in
this art, . . . such a person at the time the invention was
made would have found it obvious to have combined Yaezawa and
Wong to have arrived at the invention as claimed in
claims 13-16 because such a combination would reduce costs"
(EA11), where "the reduction of cost is an important factor in
the field of endeavor" (EA11).
We fail to see how the extremely general motivation of
reducing cost would have suggested the specific modifications
necessary to result in the claimed subject matter. While
there are some circumstances where a modification may be
suggested by cost considerations (e.g., to combine functions
to reduce the number of parts or the assembly time), we find
no direct relationship between cost and the modifications
required to produce the claimed subject matter in this case
and the Examiner has pointed to none. The Examiner does not
explain how he proposes to combine the teachings of Yaezawa
and Wong, or provide technical reasons why one of ordinary
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