Appeal 2007-0705
Application 10/431,127
motivation or suggestion for their combination with the other references
relied on, pointing out that Vaghi, Gillespie, and Vela are directed to
attachments used in connection with other apparatus in other contexts (Br. 5-
12; Reply Br. 4-5 and 6-7). Appellants contend “the Examiner’s view is that
a motivation exists when the prior art identifies a similar problem and all the
elements can be substantially identified in the prior art,” arguing that Kahn
explicitly requires articulated rational reasoning to support a legal
conclusion of obviousness of the claimed invention as a whole where all of
the claimed elements are identified in the prior art, which the Examiner has
not done (Reply Br. 4-7, citing Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness over the combined
teachings of Artwick, Reibold, Vaghi, Gillespie, and Vela.
We determine the plain language claim 1 specifies any manner of bath
scale mat comprising at least, among other things, any manner of flexible
magnetic substrate which has the capability to magnetically attach to the
standing surface of a bath scale so as to be easily removed therefrom and
replaced thereon. The transitional term “comprising” opens the claim to
include bath scale mats that contain any manner of materials in addition to
the flexible magnetic substrate. See, e.g., Vehicular Technologies Corp. v.
Titan Wheel Int’l, Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845
(Fed. Cir. 2000); Genentech Inc. v. Chiron Corp., 112 F.3d 4954, 501,
42 USPQ2d 1608, 1613 (Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686,
210 USPQ 795, 802 (CCPA 1981).
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