Appeal No. 2006-1347 Page 13
Application No. 10/651,205
turn now to whether Fast is reasonably pertinent to the problem with which the
appellants were concerned.
The court in Kahn described the proper way to define the problem with
which the inventor was concerned, stating, “In considering motivation in the
obviousness analysis, the problem examined is not the specific problem solved by
the invention but the general problem that confronted the inventor before the
invention was made.” Id. at 988, 78 USPQ at 1336. The court also notes, “[the
non-analogous arts] test begins the inquiry into whether a skilled artisan would
have been motivated to combine references by defining the prior art relevant for
the obviousness determination.” Id. at 987, 78 USPQ at 1336.
The appellants argued that the problem facing the inventor was to provide a
brace assembly having adjustable mounting surfaces to accommodate various wall
thicknesses when installing an electrical box. We find that this definition of the
problem is too narrowly-focused on the specific problem solved by the invention,
rather than more broadly focused on the general problem that confronted the
inventor before the invention was made. We find that the general problem that
confronted the inventor before the invention was made was one of providing an
adjustable mounting surface for a support.
Based on this definition of the problem, we find that the Fast reference is
reasonably pertinent to the problem with which the appellants were concerned,
because Fast similarly relates to means for providing an adjustable mounting
surface for a support. Fast describes that the tag (10) has mounting portions (14,
16, and 18), which are connected to each other by transverse lines of perforations
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