Appeal No. 1997-4381
Application 08/440,734
making the specific combination that was made by the applicant. See In re Dance, 160
F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The motivation, suggestion or teaching to
modify a reference may come explicitly from statements in the prior art, the knowledge of
one of ordinary skill in the art, or, in some cases the nature of the problem to be solved.
See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) In
addition, the teaching, motivation or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. See WMS Gaming, Inc. v. Int'l Game
Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999). 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. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Broad conclusory statements standing alone are not “evidence.”
Dembiczak, Id.
In the present case, the examiner has failed to indicate the specific understanding
or principle within the knowledge of a skilled artisan, explicit or implicit, that would have
motivated one with no knowledge of appellant’s invention to make the combination in the
manner claimed. In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir.
1998). We agree with appellant that the cited references fail to provide any teaching or
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