Appeal 2007-2640
Application 09/933,517
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” KSR, 127 S. Ct. at 1741-42, 82 USPQ2d at 1397. See
also In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1902 (Fed. Cir.
1990) (en banc); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972) (“The fact that [applicant] uses sugar for a different purpose
does not alter the conclusion that its use in a prior art composition would be
prima facie obvious from the purpose disclosed in the references.”). Thus,
as long as there is a reason for combining the references to achieve the
claimed invention, the rejection is sound, even when the reason for the
combination differs from Appellant’s own. In this case, Miyamoto teaches
the benefit of deep sea-water for aquaculture and Meilahn teaches an
aquaculture tank; thus, the skilled worker would have been motivated to fill
Meilahn’s tank with deep-sea water in order to improve fish yield.
For the foregoing reasons, we affirm the rejection of claims 8 and 44.
Claims 9, 10, 16, and 18 fall with claims 8 and 44 because separate reasons
for their patentability were not provided.
Rejection over Mougin
Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Meilahn in view of Iseki, Nomura, and Miyamato, further in view of
Mougin.
Claim 11 is drawn to the sea-water swimming pool of claim 8 which
further comprises “a propulsion device.” The Examiner contends that it
would have been obvious to outfit Meilahn’s tank with a “propulsion unit as
taught by Mougin . . . to facilitate relocation of the swimming pool structure
within a body of water” (Answer 11-12). Appellant contends that “none of
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