Appeal No. 2004-0024
Application No. 09/249,922 Page 11
to use the microprocessor controller from one type of HID in
place of the ignition controller for a different type of HID of
similar construction. Thus, we agree with the examiner that an
artisan would have been motivated to replace the ignition
controller of Gaus with the microprocessor controller of Cockram.
We are not persuaded by appellants' assertion, (brief, page
4) that "[i]f such a combination were truly obvious, it would
have been done before." Appellants' argument blurs the
distinction between 35 U.S.C. § 102 and 35 U.S.C. § 103.
Appellants are in effect arguing that if the invention were
obvious, it would have been done before, i.e., anticipated by the
prior art. It does not follow that if an invention is not
anticipated, that it is therefore not obvious. It cannot be
concluded that 35 U.S.C. § 103 adds nothing to Section 102. See
Tokyo Shibaura Electric Co., Ltd., et al. v. Zenith Radio
Corporation, 548 F.2d 88, 89, 193 USPQ 73, 74 (3rd Cir. 1977).
Nor are we persuaded by appellants' assertion (brief, page
4) that “[i]f indeed a microprocessor would be equivalent to the
control circuitry, one would think that Gaus, filed five years
after Cockram was published, would have at least mentioned that a
microprocessor could be substituted for the control circuitry
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