Appeal 2006-1143
Application 10/256,703
However, this is not to imply that the teaching suggestion or motivation must be
found explicitly in the prior art, since “the teaching, motivation, or suggestion may be
implicit from the prior art as a whole, rather than expressly stated in the references….”
In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)(citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
When the examiner does not include a teaching, suggestion, or motivation in the
examiner’s statement of the rejection, we infer that the examiner has used hindsight to
conclude the invention was obvious. See Kahn at 986, 78 USPQ2d at 1335.
ANALYSIS
We are in agreement with the examiner that Tschanz discloses both continuous
coupling of the front and rear actuators and selective coupling thereof. While appellant
argues that claim 1 comprehends only selective coupling, the open ended comprising
language thereof does not preclude reading on systems that permits both permanent
coupling and selective coupling in the same system. Therefore, we do not credit
appellant's argument that Tschanz does not have selective coupling.
On the other hand, it is our conclusion of law that there is no teaching, suggestion,
or motivation for combining the subject matter of Tschanz and Wilfert. We agree with
the appellant that incorporating the coupling mechanisms taught by Tschanz into the
system of Wilfert would significantly change the Wilfert system and undermine its
principle of operation. For example, Tschanz discloses direct connections between the
similarly situated chambers in the front and rear actuators. Wilfert on the other hand,
discloses a sort of cross over system where the A chambers are connected to the B
chambers on the opposite side of the vehicle. In our view, one of ordinary skill would
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