Appeal 2007-1214
Application 10/272,270
Appellants argue that “ovoid coil springs have existed for a long time,
perhaps even longer than the type of conveying apparatus depicted in Figure
3” (Reply Br. 3). Nevertheless, Appellants argue, the prior art did not switch
from circular springs to ovoid springs (id.) and therefore one “can only
conclude that the person of ordinary skill in the art, faced with the problem
of circular coil springs failing to provide sufficient lateral support for the
components of the conveying apparatus, would not have found it obvious to
substitute ovoid coil springs for the circular coil springs” (id. at 4).
We are not persuaded by this argument. “[T]he law does not require
that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992); see also KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1397 (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”).
Thus, the fact that Appellants’ purpose in using ovoid coil springs was
to avoid shortcomings in prior art springs does not render claim 1 any less
obvious, because one of ordinary skill viewing the prior art would have
already recognized that ovoid coil springs would be just as useful in the prior
art device depicted in Figure 3 as circular coil springs.
We therefore affirm the obviousness rejection of claim 1 over Figure
3 and Buckley. Claims 2, 10, and 11 were not argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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