Appeal No. 2004-1448
Application No. 09/454,723
Riordan, with a motor, and a battery for energizing the motor, as an improvement over a
manual (i.e., hand-operated) window covering.
We agree with the examiner, in essence, that the combination of references
would have suggested not only a rechargeable, but also a primary, battery as a means
for providing power to the motor. As appellants have established, the artisan was well
acquainted with the characteristics of both types of battery. (See, e.g., Sidman dec. at
¶¶ 3-4.) The ordinary artisan had knowledge sufficient to select either of a primary or a
rechargeable battery, based upon suitability for the details of the particular design
application (e.g., power requirements, and indications for periodic replacement versus
periodic recharging). Selection of either type of battery would have been equally
obvious. Cf. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806-07, 10 USPQ2d
1843, 1845-46 (Fed. Cir. 1989) (claimed combination of two drugs held to have been
obvious in view of reference which disclosed 1200 possible combinations, without
highlighting preference of two that were claimed). Disclosure of “a multitude of effective
combinations does not render any particular formulation less obvious.” Id. at 807, 10
USPQ2d at 1846. In any event, according to this record, if one is to be preferred, a
primary battery would have been preferable to a rechargeable battery because “internal
construction is in general more simple.” (Sidman dec. at ¶ 5.)
The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact. In re Gartside, 203 F.3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000). In our estimation, Shopp’s teachings
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007