Appeal 2006-3366
Application 10/864,041
Appellant again argues the surprising and unexpected success in
Appellant’s configuration and for high-speed motors, but does not provide
any factual support this contention (Br. 33-34). Therefore, Appellant’s
arguments are not persuasive.
Appellant contends that those skilled in the art would not have a
reasonable expectation of success regarding each of the configurations
taught and suggested by Hendershot and whether they could be built and
used successfully. Appellant identifies no legal support for this contention
that every single suggested embodiment of a prior art teaching must be able
to be “built and used successfully.” Knowing of no such requirement, we do
not find Appellant argument persuasive. No evidence has been presented to
us that Hendershot’s extensive design considerations, generally known in the
electric motor art, were not enabling to a skilled artisan.
Appellant contends that at the very best Hendershot may be deemed
an “obvious to try” suggestion which is contended in insufficient (Br. 35-37
and Reply Br. 8). As clarified in KSR, it’s now apparent “obvious to try”
may be an appropriate test in more situations than we previously
contemplated. When there is motivation:
to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her
technical grasp. If this leads to anticipated success, it is
likely the product not of innovation but of ordinary skill and
common sense. In that instance the fact that a combination
was obvious to try might show that it was obvious under
§ 103.
KSR, 127 S. Ct. 1727 at 1742, 82 USPQ2d at 1397 (2007). This
reasoning is applicable here. Additionally, KSR clarifies that, “Common
14
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: September 9, 2013