Appeal No. 2003-0628 Application No. 09/860,493 Page 5 as an option with a reasonable expectation of success in avoiding similar knee hazards or limitations of knee positioning in a golf cart construction. Thus, we are in agreement with the examiner that the applied prior art would have rendered the appealed claims prima facie obvious within the meaning of 35 U.S.C. § 103. Nor do we find appellants arguments persuasive for reasons stated by the examiner in the answer. Appellants maintain that Bonito and Dillon are not concerned with providing shade for the display monitor as taught by appellants. However, in reaching the conclusion that the herein claimed subject matter is prima facie obvious over the teachings of the applied references, we also note that the prior art references in question need not provide all of appellants* reasons, such as an alleged increase in shade for the display monitor, to establish a prima facie case of obviousness. See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (the motivation to combine features need not be identical to that of appellant to establish a prima facie case of obviousness). Furthermore, to the extent appellants may have recognized another potential advantage of the claimed monitor location that would have arisen by otherwise following the teachings of the prior art, that recognition does not necessarily form a basis for patentability. See In rePage: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007