Appeal 2007-1214
Application 10/272,270
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
We agree with the Examiner that one of ordinary skill would have
expected that ovoid coil springs would carry out the same function as
elastomeric springs in the prior art apparatus shown in Appellants’ Figure 4.
Specifically, Buckley discloses coil springs in various shapes, including
ovoid (Buckley, p. 1, ll. 72-74; Figures 5, 11, 13, and 14). Thus, ovoid
springs were well-known in the art at the time the present application was
filed.
Appellants argue that one of ordinary skill would not have reverted to
coil springs from elastomeric springs, because “[c]oil springs have other
problems which discourage their selection, such as reduced operating limits
caused by the stresses which are imparted to the springs during
manufacture” (Reply Br. 5).
We are not persuaded by this argument. As discussed above, one of
ordinary skill would have reasoned that ovoid coil springs would have been
useful in the apparatus depicted in Figure 4. Moreover, it is well settled that
obviousness analyses involving potential modifications of the prior art entail
weighing the relative trade-offs of the various alternatives. See Medichem
S.A. v. Rolabo S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed. Cir.
2006) (“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.”)
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