Appeal No. 98-2735
Application No. 90004386
16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990) (in banc), cert.
denied, 500 U.S. 904 (1991).
In determining the existence of some suggestion or
motivation, it is proper to take into account not only the
specific teachings of the prior art but also the inferences
which one skilled in the art would reasonably be expected to
draw therefrom. See In re Preda, 401 F.2d 825, 826, 159 USPQ
342, 344 (CCPA 1968). Skill must be presumed on the part of
those skilled in the art. See In re Sovish, 769 F.2d 738, 226
USPQ 771 (Fed. Cir. 1985); See also In re Jacoby, 309 F.2d
513, 135 USPQ 317 (CCPA 1962)(artisans must be presumed to
know something about the art apart from what the prior art
discloses); In re Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA
1969) (the conclusion of obviousness may be made from "common
knowledge and common sense" of the person of ordinary skill in
the art).
The initial inquiry into determining the propriety of the
examiner’s obviousness analysis is to correctly construe the
scope and meaning of the claimed subject matter. Gechter v.
Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir.
7
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