Appeal 2007-0612
Application 09/838,866
steps that a person of ordinary skill in the art would employ.”). As disclosed by
Weaver (col. 1, l. 24; col. 2, ll. 14-15), that composite also would have the
improved stiffness recited in the Appellant’s independent claims (1 and 9).
As for the improved vibration damping recited in the Appellant’s
independent claims, references need not be combined for the purpose of solving
the problem solved by the Appellant. See KSR, 127 S.Ct. at 1742, 82 USPQ2d at
1397 (“[T]he problem motivating the patentee may be only one of many addressed
by the patent’s subject matter. The question is not whether the combination was
obvious to the patentee but whether the combination was obvious to a person with
ordinary skill in the art.”); In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042
(Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990) (en banc), cert. denied, 500 U.S. 904 (1991). Adding Weaver’s silicon
boride composition strengthening agent to the prior art lightweight metal to
strengthen it would have been a reason sufficient for establishing a prima facie
case of obviousness.
In a declaration (dated January 13, 2003), Weaver (the Appellant) states:
The test results determined that vibration damping in the aluminum
matrix composite was 4.25 times greater than vibration damping in
aluminum. [¶ 15]
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