1 of the references but rather what the references taken collectively would
2 suggest to those of ordinary skill in the art presumed to be familiar with
3 them.").
4 Statements in recent Federal Circuit precedent are consistent with
5 Fridolph and Rosselet. For example, in In re Kahn, 441 F.3d 977, 987-88,
6 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), the Federal Circuit notes that the
7 reason to justify a combination of prior art teachings may be implicit from
8 the prior art as a whole, rather than expressly stated in a prior art reference.
9 In Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366,
10 80 USPQ2d 1641, 1649 (Fed. Cir. 2006), the Federal Circuit again notes
11 that the reason to combine prior art teachings may be found in the
12 knowledge of one of ordinary skill in the art, or in some cases, from the
13 nature of the problem to be solved. The Federal Circuit also notes that if the
14 prior art does not have an express suggestion to combine teachings in prior
15 art references, then the level of ordinary skill will often predetermine
16 whether an implicit suggestion exists. 464 F.3d at 1370, 80 USPQ2d at
17 1653.
18 A reason to combine teachings the prior art helps avoid an improper
19 "hindsight" analysis. However, all have to recognize that post-filing date
20 obviousness analysis is necessarily based on hindsight—one has to read the
21 specification and analyze the claims and perform an "after-the-fact" analysis.
22 But as long as the analysis takes into account only knowledge available in
23 the prior art and the skill in the art, there can be no improper "hindsight"
24 reconstruction of an applicant's claimed invention. In re McLaughlin,
25 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). To the extent that
26 applicant requires more of the PTO than is required collectively by the cited
27 cases, we respectfully disagree.
17
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