Appeal No. 2002-1066
Application No. 09/304,021
Second, we agree with appellants’ argument that there is no
proper motivation in the combined teachings of the applied
references for modifying Yankaitis in view of Green’s multiple
sensor arrangement to arrive at the claimed subject matter. In
this regard, for the reasons set forth by appellants in the
paragraph spanning pages 9-10 of the main brief, we agree with
appellants that Yankaitis and Green are based on different
principles of operation and are directed to entirely different
applications. These differences in principle of operation and
application belie the examiner’s contention that one of ordinary
skill in the art would have been led to modify Yankaitis in view
of Green’s teachings to arrive at appellants’ claimed subject
matter. Third, the examiner’s specifically articulated rationale
that it would have been to modify Yankaitis “to increase the
reliability of the [Yankaitis] device” (answer, page 3) is not
well taken because it does not appear to come from the teachings
of the applied references but instead from appellants’
disclosure. See, e.g., Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied,
488 U.S. 825 (1988)(requisite motivation to combine must stem
from some teaching, suggestion or inference in prior art as a
whole or from knowledge generally available to ordinarily skilled
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