Appeal 2007-1963
Application 10/121,226
Earth’s atmosphere) whereas the present invention operates only within the
atmosphere. Moreover, Appellants contend that combining Veliadis and
Hoyt would render Veliadis inoperable because Veliadis also operates only
within the Earth’s atmosphere (Br. 10-11).
The Examiner disagrees. The Examiner asserts that Hoyt was used to
show that it is known in the prior art to use a conductive probe for power
generation on a vehicle. Regarding Appellants’ argument that Hoyt operates
outside the atmosphere, the Examiner finds this point irrelevant because the
instant claims do not specify a particular place or any physical operational
boundaries where the invention functions (Answer 10).
“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
(Fed. Cir. 1994); see also KSR, 127 S. Ct. at 1739–40 (explaining that when
the prior art teaches away from a combination, that combination is more
likely to be nonobvious). A reference may also teach away from a use when
that use would render the result inoperable. McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001).
After carefully considering the record before us, we find the weight of
the evidence supports the Examiner’s position. In particular, we agree with
the Examiner that the language of the representative claim does not specify a
particular place where the present invention functions. We acknowledge
that Hoyt’s space tether system is only capable of using the Earth’s magnetic
field to generate electrical current while orbiting at high velocities (See
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