Appeal 2007-2031
Application 10/905,818
problem and solution as the Appellant. KSR, 127 S.Ct. at 1742, 82 USPQ2d at
1397 (“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed”).
One of ordinary skill in the art would have been able to replace the side rails
of Heckman with the conventional side walls of Pepper using methods known in
the art at the time the invention was made. Moreover, each of the elements of
Heckman and Pepper combined by the Examiner performs the same function when
combined as it does in the prior art. Thus, such a combination would have yielded
predictable results. See Sakraida, 425 U.S. at 282, 189 USPQ at 453.
Claim 17 is a combination which only unites old elements with no change in
their respective functions and which yields predictable results. Thus, the claimed
subject matter likely would have been obvious under KSR. In addition, neither
Appellant’s Specification nor Appellant’s arguments present any evidence that the
replacement of side rails with side walls is uniquely challenging or difficult for one
of ordinary skill in the art. Moreover, the side walls of Pepper are a technique that
has been used to improve one device (the pontoon boat of Pepper), and one of
ordinary skill in the art would recognize that it would improve similar devices in
the same manner.
Because Appellant has not shown that the application of the Pepper side
walls to the pontoon boat of Heckman would have been beyond the skill of one of
ordinary skill in the art, we find using the technique would have been obvious.
Under those circumstances, the Examiner did not err in holding that it would have
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