Appeal No. 1999-1080
Application No. 08/681,022
The appellants argue that there is no suggestion or
motivation to combine the teachings of the references, since
neither of the references suggests a solution to the problem
solved by the appellants, i.e., uniform dispensing of
substances with different rheologies. See brief, pp. 5-7.
The argument is unpersuasive for the following reasons.
We recognize that when a rejection depends on a combination of
prior art references, there must be some teaching,
suggestion, or motivation to combine the references. However,
it is not necessary, as the appellants would apparently have
us believe, that a suggestion or motivation to combine the
teachings of the references be found in the references
themselves or that the references teach a solution to the
specific problem addressed by the appellants. As our
reviewing court stated in In re Rouffet, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998):
Although the suggestion to combine references may
flow from the nature of the problem, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
the suggestion more often comes from the teachings
of the pertinent references, see In re Sernaker, 702
F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983), or
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