Appeal No. 2000-0142 Page 22
Application No. 08/705,569
“[T]o 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
applicant.”
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000)(citing 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)). “[E]vidence of a
suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved . . . .” In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996);
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)). “The
range of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007