Appeal No. 96-2992
Application 08/200,049
entirely determinative of the issue of obviousness. In fact, we
believe that an artisan would have found it obvious to use
Yamamoto's digital means of recording and reproducing spoken
words in Hashimoto and to provide an adequate amount of storage
for such purposes. Obviousness may sometimes be based on the
common knowledge of a person of ordinary skill in the art
without a specific suggestion in a particular reference. In re
Garrett, 949 F.2d 402, 22 USPQ2d 1077 (Fed. Cir. 1991).
Regarding Appellant's arguments about lack of a
specific teaching and not making the combination due to lack of
adequate size of storage, we find that a specific teaching is not
essential to establish obviousness for this claimed invention.
The test for obviousness is whether references would have
suggested doing what Appellant has done. In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus, the absence of
express suggestion or motivation in the applied art is not alone
determinative. The prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688,
692-693, 16 USPQ2d 1897, 1901(Fed. Cir. 1990) (in banc)
(overruling in part In re Wright, 848 F.2d 1216, 1220, 6 USPQ2d
1959, 1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991).
Thus, it is sufficient for obviousness that the artisan would
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