Appeal No. 2005-2174
Application No. 10/060,614
deflective and illuminated, while avoiding damage and injury, and (b) attract the
attention of a shopper to a specific one of many products from a substantial distance,
and (c) to provide printed matter access to purchaser” (main brief, page 18). Boggess,
however, pertains to a display that deflects to avoid damage and injury and provides
printed matter access to purchaser, both Boggess and Sernovitz relate to displays
designed to attract the attention of a shopper to a specific product from a distance, and
Sernovitz attains this objective by employing illumination. Thus, here again the
appellant’s argument finds no factual support in the fair teachings of the references.
Furthermore, it is well settled that as long as some motivation or suggestion to combine
the references is provided by the prior art taken as a whole, the law does not require
that the references be combined for the reasons contemplated by the inventor. In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). As explained
above, Boggess and Sernovitz provide the requisite motivation or suggestion for the
combination proposed by the examiner.
The contention that “the [e]xaminer made no factually-based determination as to
the level of ordinary skill [in the art]” (main brief, pages 17-18), while true, is of no
practical moment in this case. Although it is always preferable for a factfinder to specify
the level of skill applied to an invention at issue, the absence of specific findings on this
matter does not give rise to reversible error where the prior art itself reflects an
appropriate level of skill and a need for such a determination is not shown. Okajima v.
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