Appeal No. 2006-1902 Page 4
Application No. 10/317,848
The appellant contends, inter alia, that there is no motivation to combine
Taylor and Goodenough, because Goodenough relates to a reciprocating machine
that operates at slower speeds than a rotary packaging machine, such as Taylor, and
thus does not experience the same problem of product being located between the
sealing jaws. As such, it would not have been obvious to look to a slower
reciprocating machine to solve a problem encountered by a high-speed rotary
machine.1 (Appellant’s Brief, p. 4) We agree that there is no motivation to modify
the machine of Taylor to add the pads (22, 22’) of Goodenough.
We find that the examiner has failed to provide a sufficient basis for a
motivation, suggestion, or teaching that would have led one of ordinary skill in the
art at the time of the invention, possessed with the understandings and knowledge
reflected in the prior art, and motivated by the general problem facing the inventor,
to have made the combination recited in the claims. In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
Taylor is directed to a stripper for a rotary packaging machine. The machine
described in Taylor includes closer bars (19) that are mounted indirectly on the
arms (11) which also drive the sealing jaws (16). (Taylor, Figure 2). Tubular bag
material (15) is driven through the machine by a separate rotatably driven roller
which is hollow and to which a vacuum is delivered. (Taylor, col. 3, lines 20-22,
1 The appellant further argues that neither reference addresses or discusses the problem that the
claimed invention is intended to solve. (Appellant’s Brief, p. 4). We note that it is not necessary
that the prior art suggest the combination to achieve the same advantage or result discovered by
applicant. Rather, motivation to combine teachings in the art can be for a purpose different from
the purpose of the claimed invention. See Cross Medical Products, Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary
skill in the art need not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.”)
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