Appeal No. 2001-1195
Application No. 09/154,485
of those references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). It is not necessary that
the inventions of the references be physically combinable to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed.
Cir. 1983).
Appellant appears to argue (e.g., Reply Brief at ¶ bridging pages 3 and 4) that
the advantages suggested by the combination of Coates and Ohashi are not the same
as those asserted by appellant. However, for the purposes of an obviousness inquiry,
there is no requirement that an artisan’s reasons for making modifications of the prior
art be the same as that of the patent applicant. See In re Kemps, 97 F.3d 1427, 1430,
40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc) (“Although the motivation to combine
here differs from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”)).
We are thus unpersuaded of error in the rejection of instant claim 1. We sustain
the section 103 rejection of claims 1, 2, 6, and 7.
With respect to dependent claim 3, we see nothing in the claim that would not
follow from the suggested combination of Coates and Ohashi. Coates would have
suggested the 180° rotation of the control elements and the corresponding mirror-
symmetrical pattern. Claim 3 does, however, further limit base claim 1 in the aspect of
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