Appeal No. 2001-0106
Application 08/855,811
the insidious effect of a hindsight syndrome wherein that which only the invention taught
is used against its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).
Most if not all inventions arise from a combination of old elements. See In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). 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. See B.F. Goodrich
Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed.
Cir. 1996).
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. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc. v.
International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). 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. See In re Keller, 642 F.2d
413, 425, 208 U.S.P.Q. 871, 881 (CCPA 1981).
Whether the Examiner relies on an express or an implicit showing, he or she
must provide particular findings related thereto. See Dembiczak, 175 F.3d at 999, 50
USPQ2d at 1617. Broad conclusory statements standing alone are not "evidence." Id.
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007