Appeal No. 2004-0146
Application 09/851,911
under 35 U.S.C. § 103 need not be identical to the purpose or
problem which the patent applicant indicates to be the basis for
having made the invention. See In re Beattie, 974 F.2d 1309,
1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) and In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en
banc), cert. denied, 500 U.S. 904 (1991). Moreover, it is not
required that the prior art teachings relied upon disclose the
same advantage that appellant alleges, all that is required is
that there is a reasonable suggestion to do what the claimed
subject matter encompasses. See In re Kronig, 539 F.2d 1300,
190 USPQ 425 (CCPA 1976) and Ex parte Obiaya, 227 USPQ 58 (Bd.
Pat. App. & Int. 1985).
Accordingly, for the above reasons, we will sustain the
examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as
being obvious over Ellis in view of Berger.
In summary, we have refused to sustain the examiner’s
rejection of claims 1, 3, 4, 13 and 14 under either 35 U.S.C.
§ 102(b) or 35 U.S.C. § 103(a) based on Ellis alone. In
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