Ex Parte Ulrich et al - Page 12



            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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