Appeal No. 2002-0558 Page 9
Application No. 09/289,076
Claim 2, 3, and 6-8
Admitting that "Meyer did not expressly disclose a ferromagnetic transformer
core," (Examiner's Answer at 4), the examiner asserts, "[a] ferrite core transformer is
well known in the art having magnetic properties suitable for transformer action and
seen in the teaching of Kiko (US 3881149). Therefore it would have been obvious for
one of ordinary skill in the art to modify Meyer by providing a ferromagnetic transformer
core for transformer action." (Id. at 10.) The appellant argues, "combining the primary
and secondary references as proposed by the Examiner would destroy this important
function of the 'non-ferrous nature of the coil assembly 34' in the primary reference."
(Appeal Br. at 10.)
"[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants." In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). Furthermore, "prior art references . . . must
be read as a whole and consideration must be given where the references diverge and
teach away from the claimed invention." Akzo N.V. v. U.S. Intn'l Trade Comm'n, 808
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