Appeal No. 2006-1213
Application 10/396,557
when changing the cartridge or capsule, thus soiling the dispensing machine. Indeed, on this
record, appellants have not established that one of ordinary skill in this art would not have
recognized the problem in the routine use of the known cartridges or capsules in dispensing
machines and thus, would not have been motivated to solve it. See In re Nomiya, 509 F.2d 566,
574, 184 USPQ 607, 613 (CCPA 1975) (“The significance of evidence that a problem was
known in the prior art is, of course, that knowledge of a problem provides a reason or motivation
for workers in the art to apply their skill to its solution.”); In re Ludwig, 353 F.2d 241, 243,
147 USPQ 420, 421 (CCPA 1965); In re Goodman, 339 F.2d 228, 232-33, 144 USPQ 30, 33-34
(CCPA 1964).
We cannot agree with the examiner that one of ordinary skill in this art in solving the
known problem would have been motivated to combine Kishpaugh, Southall and Dalton with
Favre. This is because, as appellants point out, the disclosures of Kishpaugh, Southall and
Dalton are drawn to such dissimilar fields of endeavor and directed to solutions for different
problems that the subject matter thereof would not have logically commended itself to one of
ordinary skill in the art addressing the known problem. See generally, Kahn, 441 F.3d at 985-88,
78 USPQ2d at 1334-37; Lee, 277 F.3d at 1343, 61 USPQ2d at 1433-34; Rouffet, 149 F.3d at
1358, 47 USPQ2d at 1458; Pro-Mold and Tool Co., 75 F.3d at 1573, 37 USPQ2d at 1629-30; see
also In re Clay, 966 F.2d 656, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). (“A reference is
reasonably pertinent if, even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering the problem. Thus, the purposes of
both the invention and the prior art are important in determining whether the reference is
reasonably pertinent to the problem the invention attempts to solve.”).
Indeed, one of ordinary skill in the art would not have considered using the “gas-
permeable intermediate package member” of Kishpaugh even if the same retains dry granular
materials during evacuation of the container since the problem involving puncturing the
container and injecting an extraction solution is not addressed; the shut-off valve assembly for
filter cartridges of Southall even if the same can be useful in removing spent cartridges from
coffee-makers, since valve assemblies are not part of the problem addressed; and the matrix
septum material of Dalton is used to retain a liquid in a different environment, wherein the
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