Appeal No. 2004-2017
Application 09/501,559
These arguments are not persuasive. We find no language or holding in
Crockett which limits the obvious combination of steps to those which would each
produce the same result. Accordingly, we determine that Crockett is applicable to the
facts of this appeal where each step produces the same type of result, although one
result is superior to the other. As stated in In re Crockett, 279 F.2d 274, 276, 126
USPQ 186, 188 (CCPA 1960):
We agree with the Patent Office tribunals that the combination of steps of
claim 94 would have been obvious to a person of ordinary skill in the art.
The patents clearly teach that both magnesium oxide and calcium
carbide, individually, promote the formation of a nodular structure in cast
iron, and it would be natural to suppose that, in combination, they would
produce the same effect and would supplement each other.
On this record, Rutenberg clearly teaches that both flaking and extruding, individually,
promote higher viscosity-producing properties (i.e., lead to a product which disperses
and hydrates more rapidly in water; see col. 3, ll. 48-53). Therefore it would be natural
to suppose that, in combination, these steps would produce the same effect and would
supplement each other. The idea of combining these steps would flow logically from
the teaching of the prior art. See In re Crockett, supra; and the Answer, page 7.
Appellants argue, with respect to the second rejection on appeal, that the
examiner has failed to articulate a suggestion to combine Rutenberg with Dino, Harris,
and appellants’ specification (Brief, page 11). This argument is not persuasive since
the examiner has clearly set forth the motivation or suggestion to combine these
references as noted in the Answer, pages 5-6 and 8-9. Appellants do not present any
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