Appeal No. 2004-1917 Page 9
Application No. 09/853,096
In our view, there is sufficient motivation for a person of ordinary skill in the art at
the time the invention was made to have modified one of the layers of Anello's novelty
or toy item to be retroreflective for the reasons which follow.
There is no rule of law that an express, written motivation to combine references
must appear in the applied prior art before a finding of obviousness. The Federal
Circuit 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. See Pro-Mold v.
Great Lakes Plastics, 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996); In
re Huang, 100 F.3d 135, 139 n.5, 40 USPQ2d 1685, 1688 n.5 (Fed. Cir. 1996). The
Federal Circuit has stated that "[t]his form of motivation to combine evidence is
particularly relevant with simpler mechanical technologies." Ruiz v. A.B. Chance Co.,
357 F.3d 1270, 1276, 69 USPQ2d 1686, 1691 (Fed. Cir. 2004).
Richards teaches providing reflecting means on an arm band so that a
pedestrian or cyclist may be readily seen at night at a considerable distance by the
driver of an approaching automobile. Nestegard teaches that retroreflective conspicuity
devices on articles of clothing or accessories have been developed for use to increase
safety and visibility. Thus, both Richards and Nestegard teach that the nature of the
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