Appeal No. 2003-1513
Application No. 09/326,412
The appellant urges (supplemental appeal brief, page 3):
Accordingly, the art lacks even a suggestion that
there was a recognition of a need to provide folding
over preventing means. Also, there is nothing in
these two patents that discloses or suggests that it
would have been an advantage to prevent such folding
over. Lacking any recognition of such need or
advantage, there would have been no reason to modify
the tissue expander of Boyd with structure taken from
the implant of Baker.
We disagree. As pointed out by the examiner (answer, page
4), the prior art provides the requisite motivation, suggestion,
or teaching that would have led one of ordinary skill in the art
to combine the teachings of Baker and Boyd. That is, given
Baker’s teachings (column 4, lines 56-59), one of ordinary skill
in the art would have been led to reinforce the posterior
portion of Boyd’s device in order to prevent scar tissue
“contractures” and thus maintain the intended profile of the
device. Although the reason or motivation provided in the prior
art to combine the references is not the same as that of the
applicant, this does not in and of itself preclude a conclusion
of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc).
The appellant alleges: “[I]t appears that [Baker’s]
reinforcement member 20 is a reinforcement member with respect
to the gel material within the implant and thus it need not be
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