Appeal No. 1998-3317 Page 5
Application No. 08/575,347
whole claimed invention. See id. Rather, to establish
obviousness based on a
combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made
by the appellant. 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 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 Dembiczak, 175 F.3d at 999,
50 USPQ2d at 1617. 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.
International 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
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