Appeal 2007-1572
Application 09/726,831
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124, 56 USPQ2d
1456, 1458-59 (Fed. Cir. 2000). Medichem S.A. v. Rolabo S.L., 437 F.3d
1157, 1164, 77 USPQ2d 1865, 1869 (Fed. Cir. 2006). Where the teachings
of two or more prior art references conflict, the examiner must weigh the
power of each reference to suggest solutions to one of ordinary skill in the
art, considering the degree to which one reference might accurately discredit
another. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Further, our
reviewing court has held that:
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In
re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994);
Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1090, 37
USPQ2d 1237, 1241 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80
(1996).
ANALYSIS
Appellants argue that the Examiner erred in rejecting claims 1-13 and
15-30 under 35 U.S.C. § 103(a), because (a) the Examiner admits that
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