Appeal 2007-2111
Application 09/921,204
1 analysis, any need or problem known in the field of endeavor at the time of
2 invention and addressed by the patent can provide a reason for combining
3 the elements in the manner claimed.” 127 S.Ct. 1727, 1742.
4
5 Nor are we persuaded by Appellant's assertion (Br. 18) that the cited
6 references are from different fields than that of the claim 1 invention, and
7 this factor weighs against their use in a rejection. The test for analogous art
8 is that the references are either in the same field of invention, or that they are
9 reasonably related to the problem that Appellant is seeking to overcome.
10 Here, we find that Jenniches is directed to a package having two sets of
11 advertisements, one from the manufacturer of the product, and the other
12 from another manufacturer. The problem of increasing advertising revenue
13 by setting aside a portion of a package for advertising by another
14 manufacturer is the same problem that Appellant is solving.
15 Nor are we persuaded by Appellant's contention (id.) that "the fact
16 that the last OA resorts to three prior art references in an effort to allege the
17 unpatentability of claim 1, is an indication in and of itself that the claim 1
18 invention is not obvious." Appellant's argument is totally lacking in merit.
19 As correctly noted by the Examiner (Answer 8) "reliance on a large number
20 of references in a rejection does not, without more, weigh against the
21 obviousness of the claimed invention." As stated by the court in In re
22 Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1889 (Fed. Cir. 1991), "[t]he
23 large number of cited references does not negate the obviousness of the
24 combination, for the prior art uses the various elements for the same
25 purposes as they are used by appellants, making the claimed invention as a
16
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