Appeal No. 2000-0655 Page 3
Application No. 08/522,017
support of the rejections, and to the Brief (Paper No. 18) and Reply Brief (Paper No. 20)
for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Both rejections are under 35 U.S.C. § 103. The question under Section 103 is not
merely what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
While there must be some suggestion or motivation for one of ordinary skill in the art to
combine the teachings of references, it is not necessary that such be found within the four
corners of the references themselves; a conclusion of obviousness may be made from
common knowledge and common sense of the person of ordinary skill in the art without
any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the references themselves are
concerned, we are bound to consider the disclosure of each for what it fairly teaches one
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