Appeal No. 2003-2136 Page 6
Application No. 09/562,952
The examiner asserts, "Osamura . . . teaches one of ordinary skill in the art to
add up to 10 percent of one of Pt, Pd or Rh to the Ir or Ir alloy chips containing rare
earth metal oxides in order to obtain a longer spark plug life." (Examiner's Answer at 8.)
The appellants argue, "even though Osamura mentions an Ir-Rh alloy in column 3, line
32, without the benefit of applicant's disclosure, the skilled artisan would not be taught
by the art of record that there would be any use or advantage to forming the chip of
Oshima from an Ir-Rh alloy. . . ." (Appeal Br. at 11.)
"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
at 999, 50 USPQ2d at 1617 (citing Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75
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