Appeal 2007-1689
Application 10/431,627
processes involved with automated polynucleotide synthesis which would
have led one of ordinary skill in this art away from Penhasi’s apparatus.
We agree with Appellants that Bardman’s polymer compositions are
in a different field of endeavor. However, one of ordinary skill in the
apparatus arts would have looked to other fields of endeavor to obtain a
component which logically would have commended itself to this person’s
attention in considering a problem with an apparatus. See, e.g., KSR Int’l
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)
(“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill”); Clay, 966 F.2d at 659-60,
23 USPQ2d at 1060-61. The Examiner points out one of ordinary skill in
this art would have reasonably used a silicon caulk as taught by Bardman to
seal feed connections in Penhasi’s system.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Penhasi
alone and combined with Bardman, with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed
in a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering the problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve.
Clay, 966 F.2d at 659-60, 23 USPQ2d at 1060.
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