Solution to Different Problem Is Insufficient Motivation to Combine

In Teleflex, Inc., et al. v. KSR International Co. (Fed Cir., January 6, 2006, non-precedential), the district court correctly noted that the nature of the problem to be solved may, under appropriate circumstances, provide a suggestion or motivation to combine prior art references:

However, the test requires that the nature of the problem to be solved be such that it would have led a person of ordinary skill in the art to combine the prior art teachings in the particular manner claimed. We have recognized this situation when two prior art references address the precise problem that the patentee was trying to solve. In this case, the Asano patent does not address the same problem as the ’565 patent. The objective of the ’565 patent was to design a smaller, less complex, and less expensive electronic pedal assembly. The Asano patent, on the other hand, was directed at solving the "constant ratio
problem."

The district court’s reliance on the problems associated with the Rixon ’593 patent similarly fails to provide a sufficient motivation to combine because the Rixon ’593 patent does not address the problem to be solved by the ‘595 patent; rather, it suffers from the problem. The court did not explain how suffering from the problem addressed by the ’595 patent would have specifically motivated one skilled in the art to attach an electronic control to the support bracket of the Asano assembly.

Neither do we agree with the district court’s reliance on the express
teachings of the Smith patent. This is because the statement in the Smith patent that "the pedal assemblies must not precipitate any motion in the connecting wires," does not necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly. In other words, solving the problem of wire chafing is a different task than reducing the complexity and size of pedal assemblies. What is more, the Smith patent does not relate to adjustable pedal assemblies; therefore, it does not address the problem of wire chafing in an adjustable pedal assembly.