Appeal No. 2001-1242
Application No. 08/530,650
ordinary skill in the art that would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In appropriate circumstances, a single prior art reference can render a claim
obvious. See, e.g., B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577,
1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re O'Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988). However, there must be a showing of a suggestion
or motivation to modify the teachings of that reference to the claimed invention in order to
support the obviousness conclusion. See B.F. Goodrich , 72 F.3d at 1582, 37 USPQ2d
at 1318. This suggestion or motivation may be derived from the prior art reference itself,
O'Farrell, 853 F.3d at 902, 7 USPQ2d at 1680, from the knowledge of one of ordinary
skill in the art, or from the nature of the problem to be solved. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir.
1996); see also Motorola, Inc. v. Interdigital Tech. Corp. , 121 F.3d 1461, 1472, 43
USPQ2d 1481, 1489 (Fed. Cir. 1997) ("[T]he suggestion to combine may come from the
prior art, as filtered through the knowledge of one skilled in the art."). Determining whether
there is a suggestion or motivation to modify a prior art reference is one aspect of
determining the scope and content of the prior art, a fact question subsidiary to the
ultimate conclusion of obviousness. With this as background, we analyze the prior art
applied by the examiner in the rejection of the claims on appeal.
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