Appeal No. 2007-0800
Application No. 10/066,267
Appellant further argues that one of ordinary skill would not have
been motivated by Eppley to modify Muenchow’s device by providing it
with a remote power source, because Muenchow teaches the importance of
maintaining the power supply within a waterproof sleeve. (Br. 13-14; Reply
Br. 3.) Appellant argues that “it would be contrary to the teaching and
purpose of Muenchow to modify its enclosed local power source in
exchange for the remote power source as shown in Eppley et al. This flies in
the face of the Muenchow teaching.” (Br. 14.)
It is true that a prima facie case of obviousness based on multiple
references may be established “only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in
the art would lead that individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). “The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870
(Fed. Cir. 2006) (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8, 53 USPQ2d 1580, 1587 n.8 (Fed. Cir. 2000)).
The ultimate determination of obviousness is based on a
preponderance of the evidence. In re Kahn, 441 F.3d 977, 989, 78 USPQ2d
1329, 1338 (Fed. Cir. 2006). We agree with the Examiner that, when the
advantages of Eppley’s remote power source are weighed against
Muenchow’s enclosed power source, one of ordinary skill would have been
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