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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