Appeal No. 2004-1274
Application 09/951,616
be exposed to view and have a different color than the coping
sections.
We find that Castle teaches a splice plate 22 having a
neoprene sealant strip 44 that is exposed to view. See Castle’s
Figures 5 and 6 and column 2, line 40, through column 3, line 32.
Also, we note that the neoprene is notoriously well known to be
dark brown or black and would be a different color than the
coping sections which are conventionally silver or white.
Therefore, we find that Castle teaches all elements of
Appellants’ claim 1.
Turning to the issue of whether the Examiner has properly
combined Castle and Koenig, our reviewing court states:
While this court indeed warns against employing
hindsight, its counsel is just that – a warning. That
warning does not provide a rule of law that an express,
written motivation to combine must appear in prior art
references before a finding of obviousness. Stated
differently, this court has consistently stated that a court
or examiner may find a motivation to combine prior art
references in the nature of the problem to be solved.
Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275-76, 69 USPQ2d 1686,
1690 (Fed. Cir. 2004). Also See Pro-Mold, 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996); Display Techs., Inc. v. Paul
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