Appeal 2007-1944
Application 10/631,894
ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under
§ 103." Id., emphasis added. The Court concluded by emphasizing the
"expansive and flexible approach" mandated by its decisions, declaring,
"[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it."
Id. at 1742–43, 82 USPQ2d at 1397.)
The Court's repeated use of the terms "likely" and "might" emphasize
that in any given case, there may be additional factors that may inform the
obviousness analysis. If these factors are already of record and the examiner
has failed to address them, it may not be necessary for the applicant to do
more than point out those facts that the examiner overlooked or
misapprehended and to explain why they outweigh the evidence favoring a
conclusion of obviousness. On the other hand, it may be necessary to
introduce evidence in support of the applicant's position. But it is clear that
neither applicants nor the Board can rely on rigid rules insisting that specific
evidence of "motivation" is required in every case.
With these principles in mind, on review of the briefing in this appeal,
the dispositive issue is whether the Examiner established a sufficient basis
for concluding that the positioning of the secondary cell taught by Shioya
adjacent to the fuel cell in the fuel cell system taught by Prasad would have
been obvious to one of ordinary skill in the art. A secondary but related
issue is the obviousness of placing the fuel cell system next to a camera lens.
Both the Examiner (Answer at 4–5) and Ushiro (Br. at 8) agree that neither
Prasad nor Shioya teach a camera. Ushiro does not dispute that Ohtani and
Peterson describe cameras having battery packs next to the lens, as the
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