Ex parte SCHRAIVOGEL et al. - Page 4




          Appeal No. 94-3349                                                          
          Application 07/757,085                                                      

          provided us with the following guidance for evaluating this                 
          issue:  The question under 35 U.S.C.  103 is not merely what the           
          references expressly teach, but what they would have suggested to           
          one of ordinary skill in the art at the time the invention was              
          made.  See Merck & Co. Inc. v. Biocraft Laboratories Inc., 874              
          F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) and In re              
          Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).  While            
          there must be some suggestion or motivation for one of ordinary             
          skill in the art to combine the teachings of the references, it             
          is not necessary that such be found within the four corners of              
          the references themselves; a conclusion of obviousness may be               
          made from common knowledge and common sense of the person of                
          ordinary skill in the art without any specific hint or suggestion           
          in a particular reference.  See In re Bozek, 416 F.2d 1385, 1390,           
          163 USPQ 545, 549 (CCPA 1969).  Further, in an obviousness                  
          assessment, skill is presumed on the part of the artisan rather             
          than the lack thereof.  In re Sovish, 769 F.2d 738, 743, 226 USPQ           
          771, 774 (Fed. Cir. 1985).  Insofar as the references themselves            
          are concerned, we are bound to consider the disclosure of each              
          for what it fairly teaches one of ordinary skill in the art,                
          including not only the specific teachings, but also inferences              
          which one of ordinary skill in the art would reasonably have been           


                                         -4-                                          





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007