Appeal 2007-1204
Application 10/370,869
USPQ2d at 1396. The holding in KSR makes clear that it is no longer absolutely
necessary to find motivation in the references themselves.
Helpful insights, however, need not become rigid and
mandatory formulas; and when it is so applied, the TSM
test is incompatible with our precedents. The obviousness
analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and
the explicit content of issued patents.
KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. Rather,
the application of common sense may control the
reasoning to combine prior art teachings.
See KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
The practice of overlaying one surface on top of another to protect or give
the underlying surface other uses is familiar, such as found in the simplest
applications. It is common sense, for example, to removably place a cutting board
over a kitchen table during food preparation to protect the table and to thereby
allow the underlying table to serve other purposes once the cutting board is
removed. Similarly, to allow the support surface 10a in Engibarov to serve other
functions, such as for writing, common sense would lead one having ordinary skill
in the art to modify it as a separate member removably mounted to a flat table
support surface, as taught by Wharton.
We conclude the teachings of Engibarov and Wharton would have led one
having ordinary skill in the art to the combination of claims 1-32, and 45-57.
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