Appeal 2007-0896
Application 09/731,019
1 of persons having ordinary skill in the art, that play a role in applying the
2 motivation-suggestion-teaching test.
3 The Federal Circuit has repeatedly recognized that to establish a prima facie
4 case of obviousness, the references being combined do not need to explicitly
5 suggest combining their teachings. See e.g., In re Kahn, 441 F.3d at 987-88, 78
6 USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
7 the prior art as a whole, rather than expressly stated in the references”); and In re
8 Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
9 purpose of combining references, those references need not explicitly suggest
10 combining teachings”). The court recently noted,
11 An explicit teaching that identifies and selects elements from different
12 sources and states that they should be combined in the same way as in
13 the invention at issue, is rarely found in the prior art. As precedent
14 illustrates, many factors are relevant to the motivation-to-combine
15 aspect of the obviousness inquiry, such as the field of the specific
16 invention, the subject matter of the references, the extent to which
17 they are in the same or related fields of technology, the nature of the
18 advance made by the applicant, and the maturity and congestion of the
19 field.
20 In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006).
21 Nonfunctional descriptive material cannot render nonobvious an invention that
22 would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d
23 1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ
24 401, 404 (Fed. Cir. 1983) (when descriptive material is not functionally related to
25 the substrate, the descriptive material will not distinguish the invention from the
26 prior art in terms of patentability).
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