Appeal No. 2000-1491 Page 11
Application No. 09/067,811
person having ordinary skill in the art. In making this
obviousness determination, we remind the examiner that to
establish obviousness, there must be some motivation,
suggestion or teaching of the desirability of making the
specific combination that was made by the appellants. 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). Even when obviousness is based on a single
prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference. See
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000).
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 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. International Game Tech.,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007