Appeal No. 1999-0602
Application 08/469,393
Finally, we turn to the rejection of claims 12-14 under 35 U.S.C. § 103. We agree
with the examiner’s analysis set forth initially for this rejection at pages 3 and 4 of the final
rejection which has been embellished by the examiner at pages 5 and 6 of the answer.
As to appellant’s argument at page 6 of the brief that none of the references of
record recognize the problems that appellant’s arrangement overcomes or the benefits
achievable with the device that he has invented, we not only disagree with the assertion
that the art does not recognize the benefits achievable by appellant’s invention, but note
that patentability is not required to be based upon the problems/solution analysis identical
to applicant.
To the extent appellant argues that the purposes of the references relied upon by
the examiner are different from the appellant’s disclosed purpose, this is not pertinent to
the issue and is essentially irrelevant if the prior art teachings would have led the artisan to
construct an arrangement having the claimed structural features.
In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983) and In re Kronig, 539 F.2d
1300, 190 USPQ 425 (CCPA 1976). In re Heck also indicates that the use of patents as
references is not limited to what the patentees described as their own invention.
The law of obviousness does not require that references be combined for reasons
contemplated by an inventor, but only looks to whether the motivation or suggestion to
combine references is provided by prior art taken as a whole. In re Beattie, 974 F.2d
1309, 24 USPQ2d 1040 (Fed. Cir. 1992). In an obviousness determination, the prior art
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007