Ex Parte Luft - Page 13




                Appeal No. 2006-1149                                                                                               
                Application No. 10/296,406                                                                                         

                                        the knowledge of one of ordinary skill in the art, or, in some cases,                      
                from the nature of the problem to be solved."  Brown & Williamson Tobacco Corp. v. Philip                          
                Morris Inc., 229 F.3d 1120, 1124-25, 56 USPQ2d 1456, 1459 (Fed. Cir. 2000).  An                                    
                obviousness determination requires not only the existence of a motivation to combine                               
                elements from a different prior art reference, but also that a skilled artisan would have                          
                perceived a reasonable expectation of success in making the combination. Medchem S.A. v.                           
                Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).  While the definition of "reasonable                           
                expectation" is somewhat vague, it does not require a certainty of success. Id. at 1165 citing                     
                In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).  ("Obviousness does not require                            
                absolute predictability of success.... All that is required is a reasonable expectation of                         
                success.").  Whether an art is predictable or whether the proposed modification or                                 
                combination of the prior art has a reasonable expectation of success is determined at the time                     
                the invention was made. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).                              
                        We will sustain the examiner's rejection of claim 18 for the reasons argued by the                         
                examiner and also because we find that one of ordinary skill would readily discern from the                        
                nature of the problem to be solved that reversing the connection orientation of male and                           
                female electrical connectors would be required in certain applications.  If a person of                            
                ordinary skill in the art is presented with a female connector on an automotive wiring                             
                harness, they will instantly recognize that a male connector is required to connect with the                       
                female connector and vice-versa.  It is unclear how the design choice of substituting a male                       
                connector for a female connector would be materially impacted by the angle of the                                  

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