Appeal No. 2002-1876
Application 09/358,158
642 F.2d 413, 425, 208 USPQ 871, 881-82 (CCPA 1981) ("The
question is whether it would have been obvious to one of ordinary
skill in the art, working with the ... [prior art] references
before him, to do what the inventors herein have done ....").
The prior art need not suggest solving the same problem set forth
by Appellant. See In re Dillon, 919 F.2d 688, 693,
16 USPQ2d 1897, 1901 (Fed. Cir. 1990) ( in banc) (overruling in
part In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.
1988)). Nor do we think it is necessary that the prior art
expressly describe what problem is overcome by, or the reason
for, the structure shown in the drawings. The drawings teach
what they teach. Nevertheless, although not essential to the
rejection, we believe that one of ordinary skill in the art had
sufficient skill to appreciate that the thinner partial locking
arm in Atsumi '552 requires less force to push the retainer to
the partial locking position than to the full locking position.
Appellants argue that neither Atsumi '565 nor Figs. 9-11 of
Atsumi '552 recognizes the problem recognized by appellants of
inadvertent over-insertion of the retainer beyond the partial
locking position and to the full locking position and that
without recognition of this potential problem, the skilled
artisan simply would not have sought to modify the Atsumi '565
retainer to produce the claimed invention (Br6).
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