Appeal 2007-2869
Application 10/286,535
art, there is no impermissible use of hindsight. In re McLaughlin, 443 F.2d 1392,
1395, 170 USPQ 209, 212 (CCPA 1971). In the present case, the proposed
combination of Sakayanagi and McGaffigan is merely the substitution of one
induction heating assembly for another induction heating assembly which provides
additional benefits. Where, as here “[an application] claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
result,” KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v.
Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)). Appellants have provided no
evidence that replacing the induction heating device of Sakayanagi with an
induction heating device as taught by McGaffigan yields an unexpected result or
was uniquely challenging or difficult for one of ordinary skill in the art.
Finally, Appellants contend “there would be no motivation for one of
ordinary skill in the art to combine the references because their combination
clearly fails to achieve the benefits of the claimed invention (Reply Br. 4). The
law on obviousness does not require that the motivation to combine references
come from the problem the inventor is trying to solve. See KSR, 127 S.Ct. at 1742
(finding that the Court of Appeals erred in ruling that courts and patent examiners
should look only to the problem the patentee was trying to solve, and finding that
“[u]nder 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.” As such, we sustain the
Examiner’s rejection of claims 1, 3-5, 7, 10-27, 42, and 43 as unpatentable over
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