Appeal No. 1998-2675
Application 08/779,024
advantages that are inherent cannot be the basis for
patentability (EA8).
We agree with the Examiner that the structure of figure 6
of Chaplin would inherently cause the air current to have a
decrease in velocity, although this is not expressly
disclosed. However, such inherent characteristics cannot be
relied upon as motivation to combine in an obviousness
rejection. See In re Spormann, 363 F.2d 444, 448,
150 USPQ 449, 452 (CCPA 1966) ("That which may be inherent is
not necessarily known. Obviousness cannot be predicated on
what is unknown."). Thus, we are confined to the reasons for
providing an enlarged room stated in Chaplin as motivation for
the obviousness rejection. Chaplin discloses providing an
enlarged room to make the pressure from the driver more
uniform around the microphone.
Appellants argue that the prior art does not teach or
suggest the claimed arrangement of a noise pickup microphone
in an expanded room and its relationship to an auxiliary
microphone and speaker as set forth in the claims (Br5).
Appellants argue that the prior art provides no suggestion
which would have led one of ordinary skill in the art to
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