Appeal 2006-3252
Application 09/536,728
1 1427, 1430, 40 USPQ2d 1309, 1310 (Fed. Cir. 1996) ("Although the
2 motivation to combine here differs from that of the applicant, the motivation
3 in the prior art to combine the references does not have to be identical to that
4 of the applicant to establish obviousness." See also In re Beattie, 974 F.2d
5 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) (the law does not
6 require that the teachings of references be combined for the reasons
7 contemplated by the inventor).
8 On several occasions, the Supreme Court has emphasized that the
9 purpose of § 103 is to preclude removal of existent knowledge from the
10 public domain. Graham v. John Deere Co., 383 U.S. 1, 6 (1966). Section
11 103 permits free access to materials already available. The Supreme Court
12 reemphasized the point, albeit in somewhat of a different context involving
13 preemption of state law protecting inventions, in Bonito Boats, Inc. v.
14 Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) (United States
15 Government should not "authorize the issuance of patents whose effects are
16 to remove existent knowledge from the public domain, or to restrict free
17 access of materials already available."). KSR again reemphasizes the point
18 in a § 103 context by noting that a patent which withdraws what is already
19 known into the field of its monopoly "diminishes the resources available to
20 skillful men" quoting from Great Atlantic & Pacific Tea Co. v. Supermarket
21 Equipment Corp., 340 U.S. 147, 152 (1950). 127 S. Ct. at 1739.
22 What Esser seeks to do is remove from the public domain the right of
23 the public to use for any purpose compounds that Olson suggests, including
24 the use described and claimed by Olson. But, for reasons given above, that
25 use would have been obvious. Consistent with Graham, Bonito Boats and
25
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