Appeal 2006-3193
Application 10/772,595
Issue II: Do the facts and reasons relied on by the Examiner provide a
reasonable basis to conclude that one of ordinary skill in the art
would have been motivated to combine the teachings of the
references in the manner claimed?
“When a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385,
1395-96 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282,
96 S. Ct. 1532, 47 L. Ed. 2d 784 (1976)). As pointed out by the Examiner,
Passal teaches that the use of both quaternary ammonium salt and acetylenic
brighteners in Ni-Co electroplating processes is well known in the art
(Answer 6). Moreover, Passal teaches that various advantages are achieved
by using several types of brighteners in combination (Findings of Fact 7 &
8). See In re Thrift, 298 F.3d 1357, 1365, 63 USPQ2d 2002, 2007 (Fed. Cir.
2002)(Where a second reference identifies the benefits of adding a feature to
the primary reference, an obviousness rejection is proper.). See also In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) (“As
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
be combined for the reasons contemplated by the inventor.”). See In re
Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992)
(A reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom.); In re Bozek, 416 F.2d 1385, 1390,
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