Appeal No. 1999-0419
Application 08/383,483
In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983) and In re Kronig, 539 F.2d
1300, 190 USPQ 425 (CCPA 1976). In re Heck also indicates that the use of patents
as references is not limited to what the patentees described as their own invention.
The law of obviousness does not require that references be combined for reasons
contemplated by an inventor, but only looks to whether the motivation or suggestion to
combine references is provided by prior art taken as a whole. In re Beattie, 974 F.2d
1309, 24 USPQ2d 1040 (Fed. Cir. 1992). In an obviousness determination, the prior art
need not suggest solving the same problem set forth by appellants. In re Dillon,
919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc)(overruling in
part In re Wright, 848 F.3d 1216, 1220, 6 USPQ2d 1959, 1962 (Fed. Cir. 1988)), cert.
denied, 500 U.S. 904 (1991).
The Federal Circuit states that "[t]he mere fact that the prior art may be modified
in the manner suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further established
that “[s]uch a suggestion may come from the nature of the problem to be solved,
leading inventors to look to references relating to possible solutions to that problem.”
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996), citing In re Rinehart, 531 F.2d 1048, 1054, 189 USPQ
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