Appeal No. 2000-1515 Page 4
Application No. 08/687,195
invention to vertically juxtapose the original text and the
translated text, because, as Fujisawa points out, in column 13
lines 35-36, this creates a clear and easy to read format.”
(Examiner's Answer at 4.) The appellants allege, "[t]he
references contain no suggestion for combining their teachings
together to obtain the claimed invention" (Appeal Br. at 8.)
“Whether motivation to combine the references was shown [is]
a question of fact.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1348, 53 USPQ2d 1580, 1586 (Fed. Cir. 2000)(citing In
re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139
F.3d 877, 881-83, 886, 45 USPQ2d 1977, 1982, 1985 (Fed. Cir.
1998)). “‘[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie,
974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)
(quoting Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (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,
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