Appeal No. 2006-1085
Application No. 10/392,209
concepts, like those involved in the present application, it is reasonable to
permit inquiry into other areas where one of even limited technical skill
would have been aware that similar problems exist. See In re Heldt,
433 F.2d 808, 812, 167 USPQ 676, 679 (CCPA 1970).
As for appellants’ assertion (brief, page 7) that the examiner “did not
identify any motivation or suggestion to combined the cited references,” we
direct attention to page 3 of the answer, wherein the examiner has urged that
it would have been obvious to one of ordinary skill in the art at the time of
appellant’s invention to provide the carts or scooters of Karashima with
flanged connections like those of John “to prevent the scooters from
disconnecting in either the upward or downward directions.” However, the
real issue on appeal is whether the stated rationale of the examiner would
have been adequate to teach or suggest to one of ordinary skill in the art at
the time of appellant’s invention the combination of Karashima and John
urged by the examiner so as to render the subject matter on appeal obvious
within the meaning of 35 U.S.C. § 103. In this case, we agree with appellant
that, absent the hindsight benefit of appellant’s own disclosure and claims,
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