Appeal 2006-3327
Application 10/137,582
Appellant challenges the Examiner’s basis for motivation to combine, taken
from the references themselves, and argues,
[T]he Examiner fails to note that the key feature of the
present invention is the fact that the combination defined
by the appended claims enables the motorcycle user to
maintain the seatbacks in position within the saddle at the
same time as it is being opened and thereafter while he or
she is working on any underlying components (Br. 7).
Appellant appears to be arguing that the motivation to combine the
references must be for the same reason as Appellant. While there must be
motivation to make the claimed invention, there is no requirement that the prior art
provide the same reason as the applicant to make the claimed invention. The
reason or motivation to modify the reference may often suggest what the inventor
has done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same advantage
or result discovered by applicant.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-8 under 35 U.S.C. § 103 as unpatentable over Uchida and
Hanagan.
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