Appeal No. 1999-0344
Application 08/250,770
images is controlled by defining the amount of light exposed to the photosensitive drum
in both secondary references in the corresponding manner as appellant does. In this
light, it appears to us that the applied prior art still addresses the problem as well as the
solution provided by appellant.
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
necessarily 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 need not suggest solving the same problem set forth by
appellant. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990)(en banc)(overruling in part In re Wright, 848 F.3d 1216, 1220, 6 USPQ2d 1959,
1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991).
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