Appeal 2007-3412
Application 10/832,450
need consider only the patentability of claim 1 in view of D'Errico and
Toyama. 37 C.F.R. § 41.37(c)(1)(vii).
D'Errico asserts that the Examiner's offered motivation to combine the
references is inappropriately generic and vague, and lacks a compelling
reason to combine the references. (Br. at 4.) D'Errico insists that "[w]hat
the Examiner has really done, in fact, is extend the reach of Toyama's
alleged obviousness rendering capability to virtually every laminated
reference in existence." (Br. at 5, typeface emphasis not reproduced.) More
specifically, D'Errico complains that Toyama does not address the same
problems that concern the D'Errico references. (Br. at 6.) D'Errico
concludes that there can be no compelling reason to combine the teachings
of Toyama with those of D'Errico. (Id.)
These arguments are without merit. The Examiner found, and
D'Errico has not disputed, that the references teach laminated glass
structures suitable for automobile windshields. Moreover, the Examiner
found that the references teach IR-reflective glass laminated to plasticized
PVB that is plasticized using similar or common plasticizers. Accordingly,
the references are concerned with the same area of art, albeit with different
effects, of the same or similar additives on the same or similar polymer
layers and glass laminates. As the Supreme Court explained recently,
however, it is error to hold "that courts and patent examiners should look
only to the problem the patentee was trying to solve. . . . 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." KSR Int'l Co. v. Teleflex, Inc., 127
S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). Here, the common
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