Appeal No. 1997-0287
Application 08/263,034
the compressor rotor. The rejection over Andres and New has
been reversed, so the argument with respect to New is moot.
Insofar as Appellants contend that there is no express
suggestion in the cited art that the references be combined to
render the appealed invention obvious, such argument
improperly isolates the teachings of the individual references
and ignores well established law that obviousness is
determined by reference to the level of skill of one having
ordinary skill in the art. The Federal Circuit has stated:
[T]he language that there must be some teaching, reason,
suggestion, or motivation "in the prior art" or "in the
prior art references" to make a combination to render an
invention obvious within the meaning of 35 U.S.C. § 103
(1988) . . . if taken literally would mean that an
invention cannot be held to have been obvious unless
something specific in a prior art reference would lead an
inventor to combine the teachings therein with another
piece of prior art.
This restrictive understanding of the concept of
obviousness is clearly wrong. . . .
I believe it would better reflect the concept of
obviousness to speak in terms of "from the prior art"
rather than simply "in the prior art." The word "from"
expresses the idea of the statute that we must look at
obviousness through the eyes of one of ordinary skill in
the art and what one would be presumed to know with that
background.
. . . While there must be some teaching, reason,
suggestion, or motivation to combine existing elements to
produce the claimed device, it is not necessary that the
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