Appeal 2006-2489
Application 09/900,771
988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006). A suggestion, teaching, or
motivation to combine the relevant prior art teachings does not have to be
found explicitly in the prior art, as the teaching, motivation, or suggestion
may be implicit from the prior art as a whole, rather than expressly stated in
the references. 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. In re Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336.
We begin the analysis by considering the prior art from the viewpoint
of one of ordinary skill in the art. See In re Kotzab, 217 F.3d 1365, 1370,
55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (“A critical step in analyzing the
patentability of claims pursuant to section 103(a) is casting the mind back to
the time of invention, to consider the thinking of one of ordinary skill in the
art, guided only by the prior art references and the then-accepted wisdom in
the field.”).
D. Analysis
Stepping back and viewing the prior art from the viewpoint of one of
ordinary skill in the art, we cannot agree that the evidence supports the
position of the Examiner. The Examiner has not explained why one of
ordinary skill in the art would have applied the phase-change material of
Okamoto in the thickness claimed onto Long’s radiator coating. Okamoto
arranges a several hundred micron thick film of phase-change substance
directly onto the surface of the heat radiation wall of a spacecraft (Fig. 5 and
¶ 0017). It is arranged on the spacecraft surface as a film, according to
Okamoto, so that it is space-saving and light weight (Okamoto ¶ 0014).
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013