Appeal No. 2006-0269
Application No. 10/166,154
rigidity.” [Emphasis added.] Answer, page 5.
Appellants additionally argue that “absent appreciation of appellant’s
problem, the secondary references provide no suggestion for incorporation of
their particular textiles into the pouch of Farrell.” Brief, page 9. We disagree.
The motivation to combine references does not have to be identical to patent
owner=s to establish obviousness. In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996). In considering motivation in the
obviousness analysis, the problem examined is not the specific problem solved
by the invention but the general problem that confronted the inventor before the
invention was made. See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323,[76 USPQ2d 1662, 1685 (Fed. Cir. 2005)
(“One of ordinary skill in the art need not see the identical problem addressed in
a prior art reference to be motivated to apply its teachings.”); Ecolochem, Inc. v.
S. Cal. Edison Co., 227 F.3d 1361, 1372, 56 USPQ2d 1065, 1073 (Fed. Cir.
2000). The examiner has provided an indication of a reason, suggestion or
motivation in the prior art for one of ordinary skill in the art to substitute the more
preferred nonwoven webs of Brennan and Thaman which are known and
preferred for use in cosmetics, for the nonwoven web of Farrell.
While appellants argue that “neither of the secondary references are
concerned with controlling billowing of lather or maintaining a constant control
over gas generation (carbon dioxide),” we find none of these features in pending
claim 1, nor do we find that these concerns alone control the obviousness
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