Appeal No. 2001-0278
Application 09/069,002
We also disagree with this interpretation of Clark. Clark does input
electromagnetic pulses into a buried ferromagnetic particle susceptor material and
receive an acoustic signal. See, e.g. Clark, Figures 3D, 3E, and 3F, and column 2, line
56 - column 3, line 5.
The test for obviousness involves consideration of what the combined teachings,
as opposed to the individual teachings, of the references would suggest to those of
ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed.
Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Merely
because each individual reference lacks an element (the thrust of the Appellants’
arguments) does not mean that when properly combined a prima facie case of
obviousness has not been made out.
The Appellants have asserted that “[t]he motivation that the Examiner alleges is
nowhere suggested in Kodokian or Clark. The Examiner cannot simply make up the
motivation” (Appeal Brief, page 7, lines 11-12).
It is true that the Examiner may not “make up” the motivation. We note that there
must be some reason, suggestion, or motivation found in the prior art whereby a person
of ordinary skill in the field of the invention would make the substitutions required. That
knowledge cannot come from the applicants’ disclosure of the invention itself.
Diversitech Corp v. Century Steps, Inc., 850 F.2d 675, 687-9, 7 USPQ2d 1315, 1318
(Fed. Cir. 1988); In re Gieger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551
(Fed. Cir. 1985).
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