Appeal 2006-1914
Application 09/764,609
1 problem and there are a finite number of identified, predictable solutions, a
2 person of ordinary skill has good reason to pursue the known options within
3 his or her technical grasp. If this leads to the anticipated success, it is likely
4 the product not of innovation but of ordinary skill and common sense. In
5 that instance, the fact that a combination was obvious to try might show that
6 it was obvious under 35 U.S.C. § 103." We agree with the Examiner that an
7 artisan would have had good reason to pursue known options within the
8 artisan's grasp. However, although we found, supra, that the disclosure of
9 Chader alone was insufficient to establish a design need or market pressure
10 to solve a problem, or that there are identified predictable solutions, we find
11 that in view of the description of Acker of having either a wired or wireless
12 connection, that the art recognizes a predicable solution of having wireless
13 communication for the surgical system. In addition, from the description of
14 Acker that a wireless system avoids the physical encumbrance of loose wire
15 trailing from the system, we find that there was a design need or market
16 pressure to overcome the problem of tethered wires by making the
17 connection wireless.
18 Nor are we persuaded by Appellants' contention (Br. 6) that it would
19 have been recognized that at the time of the invention of Chader and
20 Appellants, that the amount of data needed to be transferred necessitated a
21 hard wired system. We find nothing in the language of claims 1 and 29 that
22 would require the transfer of more data than the wireless system of Acker
23 would have suggested to an artisan. Nor do we find the claims to recite any
24 particular amount of data to be transferred.
21
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