Appeal No. 1997-2087
Application No. 08/203,837
977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). To 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. 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). The motivation, suggestion or teaching to modify
a reference 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
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). In re Rouffet,
149 F.3d 1350, 1355-56, 47 USPQ2d 1453, 1456 (Fed. Cir.1998). Broad conclusory
statements standing alone are not “evidence.” Dembiczak, Id. However, when the high
level of skill in the art provides the necessary motivation, our appellate reviewing court has
instructed that such reliance must be accompanied by an explanation of "what specific
understanding or technological principle within the knowledge of one of ordinary skill in the
art would have suggested the combination."
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir.1998).
The examiner attempts to provide an explanation or motivation based on the
individual teachings of the cited references, relying on the "awareness" of the practitioner
(Examiner's Answer, paragraph bridging pages 6 and 7 and paragraph bridging pages 14
and 15). However, we do not find that the examiner has provided evidence of a "specific
understanding or technological principle within [that] knowledge" that "would have
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