Appeal No. 2000-0338 Page 5
Application No. 08/624,615
anticipated or rendered obvious by the disclosure in either
Khurgin or Boschung.” (Reply Br. at 8-9.)
“[T]o 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.”
In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000)(citing 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)). “[E]vidence of a
suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved. . . .” In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996);
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
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