Appeal 2007-0001
Application 09/944,589
example, the Examiner has failed to evaluate the quantity of experimentation
needed to make or use the invention based on the content of the disclosure;
the nature of the invention; the state of the prior art; the relative skill of those
in the art; and the level of predictability in the art. The Examiner has failed
to establish that undue experimentation would have been necessary to make
and use the invention and therefore, we will not sustain this rejection.
The obviousness rejection
We agree with the Appellant that a person of ordinary skill in the art
would be taught by Knack how to form the magnetized encoder claimed so
as to arrive at the claimed percentages 85-90% wt% of magnetic material
and 10-15% wt% elastic material. We have found that a person of ordinary
skill in the art would have been motivated to use a heat resistant rubber for
the elastic material to predictably improve the magnetized encoder’s heat
resistance and thereby reduce or eliminate cracking, a known problem in the
art, that leads to inaccuracies. See KSR Int’l Co. v. Teleflex Inc., 127 S.Ct.
1727, 1742, 82 USPQ2d 1385, 1397 (2007) (“One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent's claims.”) The magnetized encoder
thereby produced would have the thermal characteristics recited in the
claims.
We note that the Appellant acknowledges in their Specification that an
encoder having a series of alternating magnetic poles of opposite polarities
formed in a direction circumferentially of the rotary member was known in
the art (Specification 1:18-2:8).
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