Appeal No. 2005-0375
Application No. 09/826,422
corrected any such problems in Heidelberg according to the teaching value
of any one or all of the three variables in Acquaviva to improve or
otherwise minimize cogging torque problems. As such, the Acquaviva
teachings provide to the artisan only general guidance to a problem that
may or may not exist in Heidelberg’s motor. Acquaviva provides evidence
that there are a plurality of conditions under which the cogging torque may
be improved, yet it is extremely problematic as to what the effect any
teachings of Acquaviva would have on the relatively specifically defined
relationships of the parts making up the motor in Heidelberg. All of these
considerations are involved in the nature of an obvious to try rationale as
noted in In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1781 (Fed.
Cir. 1998).
Another manner in which to characterize the examiner’s motivation
analysis is that it appears to be based upon hindsight since from our view
of the evidence, there appears to be no basis to question the integrity of
the Heidelberg motor from an artisan’s perspective such as to suggest it
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007