Appeal No. 2003-1836 Page 6
Application No.10/085,590
col. 4, para. 4)." (Examiner's Answer at 5.) He further finds, "Millet et al. disclose the
advantages of scroll compressors such as their capability of extremely efficient
operation." (Final Rej. at 3.) In view of these teachings, he asserts, "it would have
been obvious to substitute a scroll compressor for the reciprocating compressor of . . .
Persem." (Id.) The appellants argue, "there is no suggestion in Millett, [sic] et al. that
would suggest substituting a scroll compressor for the Persem reciprocating
compressor." (Appeal Br. at 6.)
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "'[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.'" In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984)). "[E]vidence of a suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of ordinary skill in the art, or,
in some cases, from the nature of the problem to be solved. . . ." Dembiczak, 175 F.3d
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007