Appeal No. 2000-1201 Page 6
Application No. 08/817,825
Having determined what subject matter is being claimed,
the next inquiry is whether the subject matter is obvious.
“[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 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)). “The
range of sources available, however, does not diminish the
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007