Appeal 2006-1971
Application 10/144,224
1 that Appellants fail to argue the portions of the references relied upon by the
2 Examiner, but rather argue limitations that the references were not relied
3 upon for.
4 Nor are we persuaded by Appellants' assertion (Br. 12) that in
5 Arakaki, the upper limit of the range exceeds the upper limit of the claimed
6 separation distance. Appellants' argument fails to address the fact that the
7 disclosed range of 1-3 mm separation distance of Arakaki includes therein
8 the no more than approximately 2 mm separation distance.
9 Nor are we persuaded by Appellants' assertion (Br. 12-13) that
10 because of the number of applied references it is likely that the success of
11 the invention from the combination of references is not assured, because the
12 number of references applied is not evidence of non-obviousness. Rather,
13 the issue is whether the combined teachings and suggestions of the prior art
14 as a whole would have motivated an artisan to arrive at the claimed
15 invention. Nor are we persuaded by Appellants' assertion (Br. 13) that the
16 success of the combination could not have been predicted in the absence of
17 Appellants' disclosure, because the different reference have been applied to
18 address different features, each of which is old and well known in the prior
19 art, for the same purpose as Appellants.' In addition, we note that in
20 mechanical arts, there is a high degree of predictability. From the teachings
21 and suggestions of the prior art as outlined on our findings of fact, and the
22 evidence provided in the well reasoned Examiner's answer, we find ample
23 motivation for an artisan to have arrived at the claimed invention.
24 Motivation negates hindsight.
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