Appeal No. 2006-0554
Application 10/065,541
425 (CCPA 1976). In re Heck also indicates that the use of
patents as references is not limited to what the patentees
described as their own invention. The law of obviousness does
not require that references be combined for reasons contemplated
by an inventor, but only looks to whether the motivation or
suggestion to combine references is provided by prior art taken
as a whole. In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed.
Cir. 1992). In an obviousness determination, the prior art need
not suggest solving the same problem set forth by appellants. In
re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990)(en banc)(overruling in part In re Wright, 848 F.3d 1216,
1220, 6 USPQ2d 1959, 1962 (Fed. Cir. 1988)), cert. denied, 500
U.S. 904 (1991).
A different intended use of the same structure as in
the prior art does not prohibit a statutory anticipation
rejection, for example. Indeed, it has been stated by our
reviewing court that "the absence of a disclosure relating to
function does not defeat the Board’s finding of anticipation. It
is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable”
(case citations omitted). In re Schrieber, 128 F.3d 1473, 1477,
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