Appeal No. 2005-2174
Application No. 10/060,614
Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001). The
appellant has failed to cogently explain, and it is not evident, why Boggess and
Sernovitz do not reflect the appropriate level of ordinary skill in the art to be applied in
the obviousness determination at hand.
The appellant also queries that “[i]f obvious, why did one of skill in the art not
provide such a sign prior to the present invention since Boggess and Sernovitz have
been available since 1989 and 1981, respectively” (main brief, page 13). The mere age
of the references, however, is not persuasive of the unobviousness of the combination
of their teachings absent evidence that, notwithstanding knowledge of the references,
the art tried and failed to solve the problem. In re Wright, 569 F.2d 1124, 1127, 193
USPQ 332, 335 (CCPA 1977). As explained more fully below, the record before us
contains no such evidence.
From the appellant’s perspective (see pages 13-16 in the main brief), the
proposed combination of Boggess and Sernovitz is additionally deficient because it
would not produce the claimed invention. To illustrate this point, the appellant offers
five drawings (see pages 14 and 15 in the main brief) showing devices that might result
if Boggess and Sernovitz were combined. These drawings, however, depict unrealistic
bodily incorporations of the Sernovitz device into the Boggess display. Such renditions
conflict with the relatively simple and straightforward modification of Boggess in view of
Sernovitz proposed by the examiner. They also improperly presume a lack of skill on
the part of the artisan (see In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
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