Appeal No. 2001-0210 Page 3
Application No. 08/560,675
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
All of the claims stand rejected under 35 U.S.C. § 103. Whether a claimed
invention is unpatentable under 35 U.S.C. § 103 is a question of law based upon
underlying findings of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776
(Fed. Cir. 2000). The underlying factual inquiries include: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; and (3) the differences between the claimed
invention and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
460 (1966). What the prior art teaches and whether it teaches toward or away from the
claimed invention also is a determination of fact. Para-Ordnance Mfg. v. SGS Importers
Int’l, 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995). Similarly, whether
one of ordinary skill in the art would have been motivated to combine prior art disclosures
is also a question of fact. In re Gartside, 203 F3d. at 1316, 53 USPQ2d at 1776. A
suggestion, teaching, or motivation to combine prior art references may come from the
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. Brown & Williamson Tobacco Corp. v. Philip
Morris Inc., 229 F.3d 1120, 1125, 56 USPQ2d 1456, 1459 (Fed. Cir. 2000).
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