Appeal No. 2001-2045 Page 10
Application No. 09/360,936
The motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the
nature of the problem to be solved. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc.
v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). The test for an implicit showing is what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (and cases cited therein). Whether the
examiner relies on an express or an implicit showing, the examiner must provide
particular findings related thereto. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. Broad conclusory statements standing alone are not "evidence." Id. When an
examiner relies on general knowledge to negate patentability, that knowledge must be
articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45, 61
USPQ2d 1430, 1433-35 (Fed. Cir. 2002).
In this case, after reviewing the disclosures of the applied prior art, we find
ourselves in agreement with the appellants that absent the use of impermissible
hindsight there is no teaching, suggestion, motivation or incentive in the applied prior
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007