Appeal 2006-3327
Application 10/137,582
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.”
Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 (quoting In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
[A]n implicit motivation to combine exists not only when
a suggestion may be gleaned from the prior art as a
whole, but when the ‘improvement’ is technology-
independent and the combination of references results in
a product or process that is more desirable for example
because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the
desire to enhance commercial opportunities by improving
a product or process is universal – and even common-
sensical – we have held that there exists in these
situations a motivation to combine prior art references
even absent any hint of suggestion in the references
themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and
skills rendering him capable of combining the prior art
references.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006)
Further, it is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by applicant. See, e.g., Kahn, 441
F.3d at 988, 78 USPQ2d at 1336 (“In considering motivation in the obviousness
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