Appeal No. 1999-2077 Page 6
Application No. 08/589,251
establish that the subject matter of claims 1 and 10 is
anticipated by Lemelson.
We turn now to the obviousness rejection of claims 2 and
11 as being unpatentable over Lemelson. 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. 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. In addition,
the teaching, motivation or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the
references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the
art and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art.
Broad conclusory statements standing alone are not “evidence.”
See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17
(Fed. Cir. 2000).
Especially when considered against the background of
appellant’s invention as described in the specification (page
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