Appeal No. 2001-0472 Page 7
Application No. 09/153,951
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 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.,
184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999).
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